Intellectual Ventures II LLC v. BITCO General Insurance Corporation f/k/a Bituminous Casualty Corporation et al
Filing
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MEMORANDUM OPINION AND ORDER. The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. Within 30 days of the issuance of this Memorandum Opinion and Order, parties are ORDERED, in good faith, to medi ate this case with the mediator agreed upon by the parties. Failure to do so shall be deemed by the Court as a failure to mediate in good faith and may subject that party to such sanctions as the Court deems appropriate. Signed by Judge Rodney Gilstrap on 01/11/16. (mll, )
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
Intellectual Ventures II LLC,
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Plaintiff,
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v.
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BITCO General Insurance Corporation, et. §
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al.,
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Defendants.
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Intellectual Ventures II LLC,
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Plaintiff,
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v.
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Great West Casualty Company,
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Defendant.
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Case No. 6:15-cv-59
(LEAD CASE)
Case No. 6:15-cv-60
MEMORANDUM OPINION AND ORDER
On December 9, 2015, the Court held a hearing to determine the proper construction of
disputed terms in the two Asserted Patents in the above-captioned cases. Having considered the
parties’ arguments and claim construction briefing (Dkt. Nos. 91, 110-2, 103, and 105), the Court
issues this Memorandum Opinion and Order construing the disputed terms.
BACKGROUND AND THE ASSERTED PATENTS
Intellectual Ventures II LLC (“IV”) brings two actions: one action is against BITCO
General Insurance Corp., f/k/a, Bituminous Casualty Corp. and BITCO National Insurance Co.,
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f/k/a Bituminous Fire and Marine Insurance Co., and the second action is against Great West
Casualty Company (all defendant parties collectively, “Defendants”). The actions allege
infringement of U.S. Patent Nos. 7,516,177 (“the ’177 Patent”) and 8,929,555 (“the ’555
Patent”) (collectively, “the Asserted Patents”). The ’177 Patent and the ’555 Patent are not
related.
The ’177 Patent generally relates to a technique for aggregating information content, such
as World Wide Web content, at a personalized access point of a user. The ’177 Patent abstract
recites:
An apparatus is provided for distributing content objects to a personalized access
point of a user over a network-based environment. The apparatus includes a
server, a selection client, and a retrieval client. The server includes a database
operative to store indicia associated with at least one content object and further
operative to store user identifiers as well as information about which content
objects have been selected by a particular user. The selection client communicates
with the server via a communication link. The selection client is configured to
allow a user to select content objects to add to a personalized access point by
submitting an indicia and a user identifier to the server. The retrieval client
communicates with the server over a communication link allowing a user to
retrieve information from a personalized access point. In response to the
submission of the indicia and user identifier, at least one of: (a) a content object,
and (b) a link to a content object are added to the personalized access point of the
particular user and the particular user can retrieve the content object through the
personalized access point from the retrieval client. A method is also provided.
’177 Patent Abstract.
The ’555 Patent generally relates to data encryption methods that relate to the generation
of encryption key seeds that may be utilized for generating data encryption keys. The ’555 Patent
abstract recites:
Data encryption systems and methods. The system includes a storage device
storing data and an encryption/decryption module. The encryption/decryption
module randomly generates a device key seed according to the occurrence time of
a specific operation or the interval between two specific operations on the storage
device, and applies the device key seed to data encryption.
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’555 Patent Abstract.
APPLICABLE LAW
A. Claim Construction
“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)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; 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). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. Courts give claim terms their ordinary and accustomed meanings 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)).
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“[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). 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. 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. 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.”).
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
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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 are 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.
B. Means-Plus-Function Limitations
The parties’ disputes include disputes related to alleged means-plus-function limitations
that require construction. Where a claim limitation is expressed in “means-plus-function”
language and does not recite definite structure in support of its function, the limitation is subject
to 35 U.S.C. § 112, ¶ 6. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
In relevant part, 35 U.S.C. § 112, ¶ 6 mandates that “such a claim limitation ‘be construed to
cover the corresponding structure . . . described in the specification and equivalents thereof.’” Id.
(citing 35 U.S.C. § 112, ¶ 6). Accordingly, when faced with means-plus-function limitations,
courts “must turn to the written description of the patent to find the structure that corresponds to
the means recited in the [limitations].” Id.
Construing a means-plus-function limitation involves multiple steps. “The first step in
construing [a means-plus-function] limitation is a determination of the function of the meansplus-function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303,
1311 (Fed. Cir. 2001). Once a court has determined the limitation’s function, “the next step is to
determine the corresponding structure disclosed in the specification and equivalents thereof.” Id.
A “structure disclosed in the specification is ‘corresponding’ structure only if the specification or
prosecution history clearly links or associates that structure to the function recited in the claim.”
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Id. Moreover, the focus of the “corresponding structure” inquiry is not merely whether a
structure is capable of performing the recited function, but rather whether the corresponding
structure is “clearly linked or associated with the [recited] function.” Id.
For mean-plus-function limitations implemented by a programmed general purpose
computer or microprocessor, the corresponding structure described in the patent specification
must include an algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech.,
184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose
computer but rather the special purpose computer programmed to perform the disclosed
algorithm. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008).
There is a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply when the term
“means” is not utilized. See Williamson, 792 F.3d 1339, 1348–1349 (Fed. Cir. 2015) (holding
that a presumption exists if the word “means” is not used but overturning the prior standard that
the presumption is “strong”). “The standard is whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id. at 1349. Thus, “[w]hen a claim term lacks the word ‘means,’ the presumption can
be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails
to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id.
C. Claim Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. “[I]ndefiniteness is a question of law and in effect part of
claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). A
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party challenging the definiteness of a claim must show it is invalid by clear and convincing
evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007).
The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
[A] patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with reasonable
certainty. The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable. The standard we adopt accords
with opinions of this Court stating that “the certainty which the law requires in
patents is not greater than is reasonable, having regard to their subject-matter.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30 (2014) (internal citations
omitted).
DISPUTED TERMS
A. ’177 Patent Terms
1. Access Point Terms
“centralized access point of a user accessible via a communications link and
operative to provide the user with access to content chosen by or for the user”
(claim 11)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Should the Court conclude that the term is
subject to 35 U.S.C. § 112, ¶ 6, plaintiff
proposes the following function and
corresponding structure:
Claimed Function
operative to provide the user with access to
content chosen by or for the user
Corresponding Structure
Figs. 8, 10, 13, 14, and 15; and equivalents
thereof.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
(1) “accessible via a communications link”
(2)”operative to provide the user with access
to content chosen by or for the user”
Corresponding Structure
The “‘personal HowZone’, or personal web
page, 198,” FIG. 8; 22:20–23:10; the personal
web page, FIG. 10; 24:5–34; the personal web
page, FIG. 13; 25:60–26:6; the personal web
page, FIG. 14; 26:8–27:8; Fig. 15.
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“centralized access point” and “centralized access point of a user” (claim 11)
IV’s Construction
No construction necessary. Plain and ordinary
meaning.
Alternatively, “a network resource accessible
to one or more users and that can be used to
access content”
Defendants’ Construction
Should the Court conclude that these terms
are not included in a term subject to 35 U.S.C.
§ 112, ¶ 6, defendants propose the following
construction:
“a resource on a network, such as a web page,
that is assigned to a user and can be accessed
by that user”
“distributed information access point accessible via a communications link and
operative to implement one or more of: a) list one or more content objects, b) allow
a user to choose content for addition to their centralized access point, and c) provide
the user with logon access to their centralized access point” (claim 11)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Should the Court conclude that the term is
subject to 35 U.S.C. § 112, ¶ 6, plaintiff
proposes the following function and
corresponding structure:
Claimed Function
operative to implement one or more of: a) list
one or more content objects, b) allow a user to
choose content for addition to their
centralized access point, and c) provide the
user with logon access to their centralized
access point
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
(1) accessible via a communications link
(2) operative to implement one or more of: a)
list one or more content objects, b) allow a
user to choose content for addition to their
centralized access point, and c) provide the
user with logon access to their centralized
access point”
Corresponding Structure
The HowZone.com banner 238, FIG 11;
24:35–25:2; the banner 238, FIG. 37; 42:28–
44:18.
Corresponding Structure
Figs. 6A, 6B, 7, 9, 11, 12, 16, and 17; and
sections of Figs. 8, 13, 14, and 15; and
equivalents thereof.
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“distributed information access point” (claims 11–13, 16, 19)
IV’s Construction
No construction necessary. Plain and ordinary
meaning.
Alternatively, “a network resource that
enables a user to interact with a centralized
access point”
Defendants’ Construction
Should the Court conclude that this term is
not included in a term subject to 35 U.S.C. §
112, ¶ 6, defendants propose the following
construction:
“a resource on a network, such as a web page,
that is separate from the centralized access
point of a user, and can be accessed by and
includes information visually perceptible to
multiple users”
The primary dispute between the parties is whether the terms are means-plus-function
terms under 35 U.S.C. § 112, ¶ 6. If construed as means-plus-function terms, the parties disagree
as to the claimed functions and corresponding structures. As discussed below, the Court finds
that the terms are not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6. As
such, the Court does not reach the function and structure dispute, but rather addresses the proper
construction for the stand-alone terms.
Positions of the Parties
With regard to the means-plus-function dispute, IV asserts that in the context of the ’177
Patent, an “access point” is a specific software structure that provides access to information. IV
cites to Genband USA LLC v. Metaswitch Networks Ltd., No. 2:14-cv-33, 2015 U.S. Dist. Lexis
103512, at *53–59 (E.D. Tex. Aug. 6, 2015) for support of IV’s positions. IV asserts that in
Genband, the Court concluded that a number of “agent” terms were not means-plus-function
limitations because those skilled in the art would understand that an “agent” was “particular
software structure.” (Dkt. No. 91 at 14 (citing Genband, 2015 U.S. Dist. Lexis 103512, at *53–
59)). IV also asserts that, in other cases, this Court has found terms such as “selector
component,” “adapter component,” and “integration component” were particular software
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structures that avoid a means-plus-function construction. (Id. (citing E2E Processing, Inc. v.
Cabela’s Inc., No. 2:14-cv-36, 2015 U.S. Dist. Lexis 86060, at *13–24 (E.D. Tex. July 2,
2015))).
IV asserts that in Defendants’ PTAB petitions, the Defendants recognized that an “access
point” connotes specific software structure as opposed to a means-plus-function term: “a
resource on a network, such as a web page, that allows a user to access links and content
objects.” (Dkt. No. 91 at 14–15 (quoting Dkt. No. 91 Ex. A at 8)).
IV asserts that the claims provide context as to the terms and describe how the “access
point” terms interact with other components. IV asserts that these recitations of inputs, outputs,
and operations of the access point weigh toward concluding that the term connotes sufficient
definite structure. (Dkt. No. 91 at 16 (citing SmartFlash LLC v. Apple Inc., No. 6:13-cv-447,
2015 U.S. Dist. LEXIS 91669, *9–11 (E.D. Tex. July 15, 2015) (“code responsive to” and “code
to evaluate” terms connoted structure because, among other reasons, the claims included
substantial additional language describing the operation of the components at issue and their
interaction with other components))).
IV asserts that the specification also teaches specifics of the access point software by
displaying web pages in web browsers that perform the claimed operations. (Dkt. No. 91 at 16
(citing ’177 Patent Figures 7, 9 and 10)).
As to the meaning of the “centralized access point” terms, IV asserts that the claims
provide substantial guidance and do not contain the limitations Defendants seek. IV asserts that
claim 11 states that the “centralized access point” provides “the user with access to content
chosen by or for the user” and that “a user is enabled with the capability to log on to their
centralized access point from one or more distributed information access point(s) and access
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content chosen from one or more distributed information access point(s).” IV asserts that
Defendants’ limitations “such as a web page” and “assigned to a user and can be accessed by that
user” lack support in the intrinsic record. IV further asserts that the claims do not require these
limitations. (Dkt. No. 91 at 7). Additionally, IV contends that Defendants’ constructions are at
odds with the constructions that they proposed in the PTAB. IV asserts that in the PTAB,
Defendants construed “centralized access point” to mean “an access point that aggregates content
objects, or links to content objects, that are selected by or for a user.” (Id. (quoting Dkt. No. 91
Ex. A at 9)).
As to the meaning of “distributed access point,” IV again asserts that the surrounding
claim language provides guidance as to the meaning of the term. (Dkt. No. 91 at 4). IV notes that
in claim 11, the “distributed access point” is “accessible via a communications link and operative
to implement one or more of: a) list one or more content objects, b) allow a user to choose
content for addition to their centralized access point, and c) provide the user with logon access to
their centralized access point.” ’177 Patent claim 11. IV asserts that in claim 16, the content is
assembled into the distributed access point, the distributed access point is presented to “one or
more potential users,” content from the distributed access point is added to a centralized access
point of a particular user, and the centralized access point is accessed from the distributed access
point to then access the content. (Dkt. No. 91 at 4–5).
IV asserts that the claims do not include Defendants’ limitations. IV objects to
Defendants’ “web page” limitation and notes that dependent claim 12 recites that the access
point may be a web page or an email message. IV asserts that this limitation is absent from
independent claim 11, and thus, Defendants’ attempt to add “resource, such as a web page” fails
in light of claim 12. (Id. at 5).
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IV also objects to Defendants’ limitation of “can be accessed by and includes information
visually perceptible to multiple users.” IV asserts that the specification explains that “visually
perceptible” is only “one technique” of distributing information. (Id. (citing ’177 Patent 6:60–
64)). Further, IV notes that claim 16 includes a “visually perceptible” limitation and that claim
11 does not. IV also asserts that claim 16 states that distributed access point information is
presented to “one or more potential users.” IV argues that this conflicts with Defendants’
requirement of “multiple users.” IV also contends that claim 11 does not address, at all, how
many users must be able to access the “distributed information access point.”
Lastly, IV objects to Defendants’ requirement that the “distributed information access
point” and the “centralized access point” must be “separate.” IV asserts that the specification
never describes the two resources as “separate.” (Id. at 5–6). In fact, IV emphasizes that the
specification indicates the opposite. IV points to Figure 13 as displaying within the same web
page information relating to the distributed information access point as well as the centralized
access point of a user. (Id. at 6 (arguing that the figure depicts in a browser the “My Know-How”
information connected to the centralized access point as well as the “BROWSE” link, which
displays a list of links from which content can be added to the centralized access point for Suzi
Henriot)). IV notes that in Defendants’ IPR petitions to the PTAB, the Defendants’ constructions
lacked the “separate” requirement by proposing only: “an access point that makes information
visually perceptible to multiple users, such as a web page or login page.” (Id. (quoting Dkt. No.
91 Ex. A at 10)).
Defendants assert that the “access point” terms are drafted in classic means-plus-function
format and that “means” is merely replaced with “access point.”
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Defendants assert that the “centralized access point” term must perform two functions:
(1) it is accessible via a communications link and (2) it is operative to provide the user with
access to content chosen by or for the user. Defendants contend that the specification confirms
that the “access point” limitations lack structure. Further, Defendants argue that the
corresponding structure for the “centralized access point” is the “‘personal HowZone,’ or
personal web page, 198.” (Dkt. No. 110-2 at 16 (citing ’177 Patent 22:20–23:10)). Defendants
state that this is also shown in Figures 10, 13, 14, 15, and associated text. Defendants assert that
these web pages are “accessible via a communication link” by virtue of being web pages and that
the web pages satisfy the “operative to provide” function because of the software algorithm that
implements the web pages. (Id.). Defendants state that an interface created by that algorithm is
shown in Figures 8, 10, 13, 14, and 15 and discussed at ’177 Patent 24:5–34, 25:60–26:6, and
26:8–27:8. (Id.).
Defendants assert that the “distributed information access point” term has two functions:
(1) it is accessible via a communication link, and (2) it is operative to implement one or more of
the three functions that the claim specifies. (Dkt. No. 110-2 at 15). Defendants assert that the
patent discloses that the “distributed information access point” may refer to any number of
hardware or software components, including “a token placed on a product, product packaging, a
sign or advertisement” (’177 Patent 6:66–67), “screen displays on client computers or wireless
web appliances” (Id. at 7:1–2), “a rich media banner ad” (Id. at 7:6–7), “co-branding
information . . . on a third-party web site” (Id. at 7:8–10), “a button, clickable icon, a clickable
graphic or a hypertext link” (Id. at 14:48–50), or “a networked device such as networked cash
register” (Id. at 14:51–52). Defendants assert that these broad, scattershot descriptions emphasize
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that the term is described by function, and not by any particular structure. (Dkt. No. 110-2 at 15–
16.)
Defendants assert that for both “distributed information access point” functions, the
structure is the HowZone.com banner ad labeled 238 in Figures 11 and 37 and discussed at
24:35–25:2 and 42:28–44:18. (Id. at 16 (particularly noting ’177 Patent 24:41–48)). Defendants
assert that the banner ads implement each of the three limitations from the claimed list included
in the second recited function. (Dkt. No. 110-2 at 16).
Defendants assert that IV’s position is that “access point” is a “specific software structure
that provides access to information.” (Dkt. No. 110-2 at 16–17 (quoting Dkt. No. 91 at 14)).
Defendants assert that the patent states the opposite: that an “access point” can be any number of
things, software or hardware. Defendants point to specification passages where the access point
is a “web page” or a networked device such as a networked cash register. (Id. at 17 (citing ’177
Patent 14:43–52, Fig. 2)). Defendants assert that it could even be a “token placed on a product,
product packaging, a sign or an advertisement.” (Id. (quoting ’177 Patent 6:66–67)). As to the
District Court cases IV cites, Defendants note that none of those cases dealt with the term
“access point.” As to the IPR petitions, Defendants assert that the claim construction standard is
a different and broader standard in such actions.
In reply, IV asserts that Defendants disregard analogous authority from this Court
concluding that “agent,” “code,” “component,” and “processor” related terms did not invoke
§ 112, ¶ 6. (Dkt. No. 103 at 6). IV asserts that Defendants also ignore the operational detail and
specific software structure disclosed in the specification. IV further asserts that Defendants
mischaracterize the legal test for determining if § 112, ¶ 6 applies. In particular, IV asserts that
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Defendants mischaracterize the legal test as merely being whether or not the claims can be
rewritten as “means” limitations. (Id. at 7).
As to the stand-alone terms (“centralized access point” and “distributed information
access point”), IV asserts that the plain language of some of the claims (1) recites “one or more”
potential users, not multiple users, (2) includes “visually perceptible” while others do not, and
(3) recites “web page” while others do not. (Dkt. No. 103 at 9). IV also asserts that the
specification only discloses those features as examples, not requirements. (Id.).
As to the “separate” requirement, IV agrees that the terms are different claim elements.
However, IV asserts that this does not require the access points to be separate web pages or
preclude the access points from powering different portions of the same web page. (Id.). IV
asserts that the specification teaches that Figure 14 discloses a single web page with both access
points. Specifically, IV asserts that the figure discloses, above the personalized portal, the
BROWSE link, which is not specific to a user. IV asserts that from this link, the user can select
content to add to a personalized portal. IV asserts that the BROWSE link is displayed along with
the personalized portal content link. (Id.).
As to Defendants’ limitation requiring the central access point be “assigned to a user,” IV
asserts the claims detail the relationship between the access point and the user. IV asserts that the
claims do not mention “assign.” (Id.).
Analysis
There is a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply when the term
“means” is not utilized. See Williamson, 792 F.3d 1339, 1348–1349 (Fed. Cir. 2015) (holding
that a presumption exists if the word “means” is not used but overturning the prior standard that
the presumption is “strong”). “The standard is whether the words of the claim are understood by
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persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id. at 1349. Thus, “[w]hen a claim term lacks the word ‘means,’ the presumption can
be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails
to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. Defendants have not overcome the presumption.
Defendants’ primary argument is that the claim recites function. Mere recitation of
function is not the proper legal test. See id. Further, Defendants appear to assert that because the
element implicates software structure, the term must be considered to be a means-plus-function
element. Again, that is not the law. See id. In this regard, the holdings of Apple, Inc. v. Motorola,
Inc., 757 F.3d 1286 (Fed. Cir. 2014) are still relevant post-Williamson:
Rather, to one of skill in the art, the ‘structure’ of computer software is
understood through, for example, an outline of an algorithm, a flowchart, or a
specific set of instructions or rules. Requiring traditional physical structure in
software limitations lacking the term means would result in all of these limitations
being construed as means-plus-function limitations and subsequently being found
indefinite.
Apple, Inc., 757 F.3d at 1298–99 (citations omitted). “Structure may also be provided by
describing the claim limitation’s operation, such as its input, output, or connections. The
limitation’s operation is more than just its function; it is how the function is achieved in the
context of the invention.” Id. at 1299.
Here, “access point” is not a mere nonce word. The parties do not provide evidence that,
to one skilled in the art, “access point” is generic, structureless, and without any meaning.
Further, as described in the context of the specification, the term relates to a network software
resource. As to the implications of a term embodying software, the Federal Circuit and this Court
have found that software may connate structure. Apple, Inc., 757 F.3d at 1298–99; Genband.,
2015 U.S. Dist. Lexis 103512, at *53–59 (finding that “agent” was a particular software structure
16
and not a means-plus-function term); Affinity Labs of Texas v. Samsung Elect. Co., et al., No. 112-cv-557, Dkt. No. 186 at 6–10 (E. D. Tex. June 3, 2014) (finding that the mere use of the word
“software” does not rebut the presumption and that “software” is a structure connoting term to
one skilled in the art); Aloft Media, LLC v. Adobe Sys., Inc., 570 F. Supp. 2d 887, 897-898 (E.D.
Tex. 2008) (finding “computer code” recited sufficient structure to avoid the application of 35
U.S.C. § 112, ¶ 6). The evidence shows that “access point” refers to the structure of a network
resource that serves to provide access to the system. ’177 Patent at 2:44–3:25, 6:48–7:23, 7:62–
8:30, 16:39–58 22:20–45: 24:5–25:2, 25:60–27:8, 42:28–44:18, Figures 8, 10, 11, 13, 14, 15, 37.
Moreover, even if the terms were found to be without structural meaning (a finding the Court
does not reach), the intrinsic record itself may provide sufficient detail to remove the term from
the scope of 35 U.S.C. § 112, ¶ 6. Apple, Inc., 757 F.3d at 1290 (looking at the intrinsic evidence
for the inputs, outputs, connections and operation of the recited element). Here the claims and
specification provide such detail for both “centralized access point” and “distributed information
access point.”
Having rejected Defendants’ assertions that the terms are means-plus-function terms, the
Court turns to the meaning of the stand-alone terms. All parties include the concept of a network
resource in their constructions. Defendants seek to add “such as a web page” to both terms.
There appears to be no dispute between the parties that a network resource can include web
pages. It is noted that Defendants’ use of “such as” does not limit the network resources to web
pages but merely provides an example. In that regard, Defendants’ construction is not helpful
and may cause confusion. If access points were read to be limited to web pages, such a
construction would exclude embodiments such as described in dependent claim 12 in which the
distributed information access point is an email. Other non-web page access points are also
17
described in the specification. ’177 6:65–7:10, 14:43–54. Defendants even acknowledge as much
in their briefing. (Dkt. No. 110-2 at 15–16).
As to Defendants’ use of “assigned to a user” to construe “centralized access point,” the
claims characterize the relationship of the user and the access point in the broader context of the
“centralized access point” being “of a user” (claim 11) and “of the particular user” (claim 16).
Other portions of claim 11 are also in conformance by repeatedly referring to “their centralized
access point.” The claims themselves may provide guidance in determining the meaning of
particular claim terms. See Phillips, 415 F.3d at 1314. Here, the claims themselves describe the
relationship between the access point and a user as being “of a user” and “their centralized access
point” or “of the particular user.” Defendants’ additional “assigned” is, thus, rejected.
As to “visually perceptible,” some claims call out “visually perceptible” while others do
not. Id. claims 11 and 16. Defendants’ “visually perceptible” limitation is rejected. Further,
Defendants have not pointed to lexicography or disavowal requiring such a limitation. See
Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011)
(“Even where a patent describes only a single embodiment, claims will not be read restrictively
unless the patentee has demonstrated a clear intention to limit the claim scope using words or
expressions of manifest exclusion or restriction.”) (internal citations omitted).
Defendants’ inclusion of “multiple users” within the construction of “distributed
information access point” is also contradicted by the claims themselves. Some claims explicitly
call out only “one or more users:” “presenting one or more distributed information access points
to one or more potential users.” ’177 Patent claim 16. Thus, in claim 16, the distributed
information access point would only need to be presented to one potential user. Though other
claims do not include this language, that claim 16 requires only “one or more” provides guidance
18
against Defendants’ position. Thus, though more than one user may be allowed, it is not
required.
Though permissible to be presented to one potential user, the distributed information
access point must still be a “distributed” access point. The specification provides context to the
meaning of “distributed” in the many examples of access points that are delivered in some form
or fashion to a user: “a token placed on a product, product packaging, a sign or advertisement”
(’177 Patent 6:66–67), “screen displays on client computers or wireless web appliances” (Id. at
7:1–2), “a rich media banner ad” (Id. at 7:6–7), “co-branding information . . . on a third-party
web site” (Id. at 7:8–10), “a button, clickable icon, a clickable graphic or a hypertext link” (Id. at
14:48–59), or provision at “a networked device such as networked cash register” (Id. at 14:51–
52). Such access points are configured to be delivered to provide access to a location, user, etc.
The claim only requires such an access point to be provided to one user. What is provided,
however, must still be a “distributed access point.” IV’s construction does not give meaning and
context to the “distributed” portion of the claim term. IV acknowledged this at that oral hearing.
(Dkt. No. 114 at 23:14–24:22). The Court’s construction provided below includes the
distribution context.
As to Defendants’ “separate” requirement, Defendants have not pointed to any
lexicography, disclaimer or disavowal excluding non-separate access points. See Arlington
Industries, Inc., 632 F.3d at 1254. Moreover, the specification teaches an example of a
distributed access point which may be a banner ad. ’177 Patent at 7:6–7, 24:35–61, Figure 11.
This banner ad or its HTML contents “can be embedded anywhere within any web page.” Id. at
42:63–43:10. Thus, as claimed, the distributed information access point may merely be “a
portion of a web page.” Id. at claim 12. As noted above, Defendants acknowledge that a
19
centralized access point may be a web page. Thus, Defendants’ “separate” construction conflicts
with the specification because the banner ad or its contents could be embedded in “any web
page.”
The Court finds that the terms “centralized access point of a user accessible via a
communications link and operative to provide the user with access to content chosen by or
for the user” and “distributed information access point accessible via a communications
link and operative to implement one or more of: a) list one or more content objects, b)
allow a user to choose content for addition to their centralized access point, and c) provide
the user with logon access to their centralized access point” are not means-plus-function
terms subject to 35 U.S.C. § 112, ¶ 6.
The Court construes “centralized access point of a user” to mean “a user’s network
resource that can be used to access content.” The Court construes “distributed information
access point” to mean “a network resource which is delivered to one or more users and that
enables a user to interact with a centralized access point.”
2. “[assembling content into] one or more distributed information access points which
are in communication with the database over the communication link” (claim 16)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Should the Court conclude that the term is
subject to 35 U.S.C. § 112, ¶ 6, plaintiff
proposes the following corresponding
structure:
Claimed Functions
one or more distributed information access
points (1) “in communication with the
database over the
communication link”
Corresponding Structure
Figs. 6A, 6B, 7, 9, 11, 12, 16, and 17; and
sections of Figs. 8, 13, 14, and 15; and
equivalents thereof.
Corresponding Structure
The HowZone.com banner 238, FIG 11;
24:35–25:2; the banner 238, FIG. 37. 42:28–
44:18.
20
The primary dispute between the parties is whether the term is a means-plus-function
term under 35 U.S.C. § 112, ¶ 6. If construed as a means-plus-function term, the parties disagree
as to the claimed function and corresponding structure. As discussed below, the Court finds that
the term is not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6.
Positions of the Parties
IV asserts that the disputed term is not a means-plus-function term for the same reasons
described above with regard to the claim 11 term “at least one distributed information access
point.” Further, IV asserts that the limitations of this term in claim 16 do not recite a function,
additional evidence that the term is not a means-plus-function term. (Dkt. No. 91 at 18 (citing
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999))).
Defendants assert that the claimed function is “which are in communication with the
database over the communication link.” (Dkt. No. 110-2 at 18). Defendants assert that “access
points” is a verbal construct which could have been replaced by “means” and, under Williamson,
the term is a means-plus-function term. Defendants assert that “distributed information access
point” is similar to “distributed learning control module” of Williamson. (Id. at 18).
Analysis
For the same reason as presented above with regard to the “distributed information access
point” term of claim 11, the Court finds that the disputed term in claim 16 is not subject to 35
U.S.C. § 112, ¶ 6. It is further noted that in claim 16, the full phrase is found in one of the
method steps of the method claim: “assembling content into one or more distributed information
access points which are in communication with the database over the communication link.” In
this context, the claim language is not within the traditional means-plus-function format. Rather,
21
the language following “distributed information access points” describes the physical
relationship of the access point and the database via a communication link.
The Court finds that “one or more distributed information access points which are
in communication with the database over the communication link” is not a means-plusfunction term subject to 35 U.S.C. § 112, ¶ 6.
Other than the construction of “distributed information access point” as provided
elsewhere herein, no further construction is necessary.
3. “[accessing the centralized access point of the particular user from] one or more
distributed information access points to gain access to the selected content” (claim
16)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Should the Court conclude that the term is
subject to 35 U.S.C. § 112, ¶ 6, plaintiff
proposes the following corresponding
structure:
Corresponding Structure
Figs. 8, 10, 13, 14, and 15; and equivalents
thereof.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
one or more distributed information access
points (1) allowing “access to the
selected content”
Corresponding Structure
The HowZone.com banner 238, FIG 11;
24:35–25:2; the banner 238, FIG. 37. 42:28–
44:18.
The primary dispute between the parties is whether the term is a means-plus-function
term under 35 U.S.C. § 112, ¶ 6. If construed as a means-plus-function term, the parties disagree
as to the claimed function and corresponding structure. As discussed below, the Court finds that
the term is not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6.
Positions of the Parties
IV asserts that the disputed term is not a means-plus-function term for the same reasons
described above with regard to the claim 11 term “centralized access point of a user.” Further, IV
22
asserts the limitations of this term in claim 16 do not recite a function, further evidence that the
term is not a means-plus-function term. (Dkt. No. 91 at 18 (citing Rodime PLC v. Seagate Tech.,
Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999))).
Defendants assert that the “distributed information access points” must perform a
function: they allow access “to the selected content.” (Dkt. No. 110-2 at 19). Defendants assert
that the recited function “is performed by the ‘centralized access point of the particular user.’”
(Id.). Defendants assert that, as with the prior “distributed information access point” terms, the
structure corresponding to the recited function is the HowZone.com banner ad labeled 238 in
Figures 11 and 37. (Id.). Defendants assert that the patent indicates that the banner ads are
“distributed information access points.” (Id. at 19–20 (citing ’177 Patent 2:41–45)). Defendants
assert that the banner ads allow a user to access selected content by using the “MyHowZone”
link that allows a user to log onto a centralized access point. (Id.).
Defendants assert that IV misstates Rodime, because in Rodime the Federal Circuit
concluded that the claim language linked the means to the function. (Id.).
Analysis
For the same reason as presented above with regard to the “distributed information access
point” term of claim 11, the Court finds that the disputed term in claim 16 is not subject to 35
U.S.C. § 112, ¶ 6. It is further noted that in claim 16, the full phrase is found in one of the
method steps of the method claim: “accessing the centralized access point of the particular user
from one or more distributed information access points to gain access to the selected content.” In
this context, the claim language is not within the traditional means-plus-function format. Rather,
the term merely describes the “accessing” method step and is not a functional description of the
“distributed information access point.”
23
The Court finds that “one or more distributed information access points to gain
access to the selected content” is not a means-plus-function term subject to 35 U.S.C. § 112,
¶ 6.
Other than the construction of “distributed information access point” as provided
elsewhere herein, no further construction is necessary.
4. “administrative interface in communication with the server and operative to create
groupings of content into one or more distributed information access points” (claim
11)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
No construction is necessary. Plain and
ordinary meaning.
Should the Court conclude that the term is
subject to 35 U.S.C. § 112, ¶ 6, plaintiff
proposes the following function and
corresponding structure:
Claimed Function
operative to create groupings of
content into one or more distributed
information access points
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
(1) in communication with the server
(2) operative to create groupings of content
into one or more distributed information
access points”
Corresponding Structure
This term is indefinite for failure to disclose
adequate structure, including at least failure to
disclose an algorithm corresponding to a
function performed by computer software.
Corresponding Structure
Figs. 18, 26, 34A, 34B, and 52; and
equivalents thereof.
The first dispute between the parties is whether the term is a means-plus-function term
subject to 35 U.S.C. § 112, ¶ 6. If a means-plus-function term, Defendants assert the term is
indefinite for failure to disclose adequate structure. As discussed below, the Court finds that the
term is not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6. As such, the
24
Court does not reach the indefinite dispute but rather addresses the proper construction for the
term “administrative interface.”
Positions of the Parties
IV notes that this Court has found that “interface” connotes structure with regard to the
term “telecommunications interface module.” (Dkt. No. 91 at 17 (citing Genband USA LLC v.
Metaswitch Networks Ltd., 2015 U.S. Dist. Lexis 103512, at *41(E.D. Tex. Aug. 6, 2015))). IV
asserts that the Genband holding is consistent with how skilled artisans would understand the
term. (Id. (citing Microsoft Computer Dictionary definition: “software that enables a program to
work with the user …, with another program…, or with the computer’s hardware.”)). IV also
asserts that the specification references “interface” as an identifiable structure through describing
the “graphical user interface features.” (Id. (citing ’177 Patent 16:39–58 (referencing Figures 561))).
IV asserts that an “administrative” interface is one type of interface. IV asserts that claim
11 details the operations of this interface—it communicates with the server, and it operates to
create groupings of content into one or more distributed information access points. IV also notes
that in the IPR petitions, the Defendants did not allege that the term is a means-plus-function
term. (Dkt. No. 91 at 17).
Should the Court find the term to be a means-plus-function term, IV asserts that the
specification discloses a number of exemplary administrative interfaces, including Figures 18
and 24–26. IV asserts that its structure is more appropriate than Defendants’ alternative structure.
(Id.).
Defendants assert that IV’s argument that the phrase is not means-plus-function is wrong
as a matter of law under Williamson. (Id.). Defendants assert that “interface” is a verbal construct
25
like “device” and “module” that can reflect almost anything, rather than something definite.
(Dkt. No. 110-2 at 9). Defendants assert that this is confirmed by the specification which
discloses that the interface may comprise (1) hardware (display screen, keyboard and/or tactile
input device), (2) “software resident in memory on web server computer 115” or (3) the display
and distribution banner 238 which according to the specification “provides an interface for
users.” (Id. (citing ’177 Patent 11:43–44, 16:43–44, 42:41–43)). Defendants assert that this
teaches away from any definite structure, and instead, shows that the phrase is simply a verbal
construct. (Id.).
As to IV’s dictionary definition, Defendants assert that nothing in the definition supplies
structure sufficient to create groupings of content into one or more distributed information access
points. Defendants also assert that the definition simply defines what an interface “does,” not the
algorithm by which it performs those functions. (Id.).
Analysis
There is a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply when the term
“means” is not utilized. See Williamson, 792 F.3d 1339, 1348–1349 (Fed. Cir. 2015) (holding
that a presumption exists if the word “means” is not used but overturning the prior standard that
the presumption is “strong”). “The standard is whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id. at 1349. Thus, “[w]hen a claim term lacks the word ‘means,’ the presumption can
be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails
to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. Defendants have not overcome the presumption.
Defendants’ primary argument is that because the specification provides a wide variety of
26
types of interfaces, the term “interface” must be considered a nonce word. However, merely
because a term has a number of different meanings does not mean the term is merely a verbal
construct. Furthermore, the full term in question is “administrative interface.” In light of the
specification and the claim usage, it is clear that the context of “administrative interface” is not,
for example, a keyboard. When reviewing the claims and the specification, “administrative
interface” carries a meaning directed toward not just any interface but rather related to the
software for the administrative pages and screen displays.
The specification further describes these types of interfaces as a software graphical user
interface:
FIGS 5-61 illustrate by example graphical user interface features as seen from a
client by a user or system administrator and comprising hypertext mark-up
language (HTML), front end user tools that are provided as an extension to a web
server 114 and software resident in memory on web server 115 (of FIG. 1).
’177 Patent at 16:39–44. 1 Thus, the specification provides context for the software of an
“administrative page” that is described extensively throughout the specification with regard to
Figures 26, 34A, 34B and 52 and the passages describing those figures. ’177 Patent Figures 26,
34A, 34B, and 52; ’177 Patent 34:61–35:17, 40:16–41:4, 51:46–52:22. The figures are described
as “screen display for a HowZone administrative page” or “screen display for an administrative
page.” ’177 Patent 4:60–61, 5:17–18, 6:9–10. These pages allow administrators to perform a
variety of administrator functions: “approve user requests for new content” (‘177 Patent 4:60–
61), “approval of a potential contributor” to the system (’177 Patent 5:18–19), and “approve a
content object” (’177 Patent 6:10–11). With reference to Figure 18, the term “administrative
page” is not used, but the specification states the figure is “a diagram of a screen display used by
HowZone administrators to add a new category to the category listing.” ’177 Patent 4:31–32.
1
At the oral hearing, when asked by the Court what the plain and ordinary meaning was, IV proposed “graphical
user interface that an administrator uses to group content objects together.” (Dkt. No. 114 at 41:4–11).
27
This is summarized in the specification as:
As will be described below in greater detail, staff and administrators at
Applicant’s web site are able to manage content categories, manage suggestions
for content objects, manage content contributors, manage content objects, cobrand categories, and place commerce on content categories. Accordingly, the
operation of Applicant’s web site, as well as related web properties, is highly
automated and is browser based. Accordingly, such administrative
implementation scales, or can be increased in capacity or size, without limitation.
’177 Patent 8:38–47. Thus, the specification describes a software management tool that
facilitates administrative functions. Overall, the specification usage also conforms to the
extrinsic evidence dictionary definition cited by IV for the use of “interface” in the context of a
software interface. On balance, the intrinsic and extrinsic evidence shows that “interface” is not a
verbal construct but rather connotes sufficiently definite structure to one skilled in the art.
In context of the specification passages and figures noted above, an “administrative
interface” is a software management tool that facilitates administrative functions.
The Court finds that the term “administrative interface in communication with the
server and operative to create groupings of content into one or more distributed
information access points” is not a means-plus-function term subject to 35 U.S.C. § 112,
¶ 6.
The Court construes “administrative interface” to mean “a software management
tool that facilitates administrative functions.”
5. “centralized access point of the particular user” (claim 16)
IV’s Construction
The term is not indefinite
Defendants’ Construction
This term lacks antecedent basis and is
therefore indefinite
Same as “centralized access point of a user”
The parties dispute whether or not the term is indefinite for lacking an antecedent basis
for “the” particular user.
28
Positions of the Parties
IV asserts that Defendants focus on the use of “the.” IV asserts that Courts have rejected
Defendants’ types of quibbles of “form over substance.” (Dkt. No. 91 at 8). Further, IV asserts
that it is well settled that the lack of explicit antecedent basis does not render a claim indefinite
when the claim implies the antecedent basis. (Id. (citing Energizer Holdings Inc. v. ITC, 435
F.3d 1366, 1371 (Fed. Cir. 2006) and Microprocessor Enhancement Corp. v. Tex. Instruments
Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008))). IV asserts that the claim recites that a distributed
information access point is presented to “one or more potential users.” IV asserts that the claim
then states that content is selected from the distributed information access point for addition to
the centralized access point “of the particular user” and that the centralized access point “of the
particular user” is accessed in order to access the selected content. IV asserts that the claim
provides, with reasonable certainty, that the “particular user” is the user from the “one or more
potential users” for which content has been selected and accessed. (Id. at 9).
Defendants assert that the claim is not reasonably certain under Nautilus. Defendants
assert that the claim first recites any number of potential users: “one or more potential users.”
Defendants assert that the next step requires “selecting content . . . for addition to a centralized
access point of the particular user.” Defendants assert that of the many “potential users” that the
claim contemplates, the claim does not specify which one is “the particular user.” (Dkt. No. 1102 at 28). Defendants assert that the claim then requires “accessing the centralized access point of
the particular user from one or more distributed information access points to gain access to the
selected content.” Defendants assert that, again, the claim does not specify which particular
“potential user” is “the particular user.” (Id.).
29
Defendants assert that the patent discloses that existing users, and not potential users,
have a centralized access point. (Dkt. No. 105 at 5). Defendants assert that claim 16 does not
indicate who or what selects content. Defendants assert that the claim does not make clear on
whose centralized access point content is placed—an existing user, a new user, or one of the
potential users. Defendants assert that the claim could be read to cover a method whereby a
particular user selects content and signs up for a centralized access point, thereby becoming the
particular user. (Id.). Alternatively, Defendants assert that even IV suggests the claim can be read
to cover the situation where an administrator selects content to add to an existing user’s page, as
in the “RECOMMENDED FOR YOU” feature cited in IV’s tutorial. (Id.).
Defendants assert that the facts are similar to Loyalty Conversion Sys. Corp. v. Am.
Airlines, Inc., No. 2:13-cv-655, 2014 WL 4352489 (E.D. Tex. Sept. 2, 2014). Defendants assert
that in that case, a first claimed step required “one or more computers,” a second claimed step
required “one or more computers,” and then the claim required an action performed by “the at
least one of the one or more computers.” Defendants assert that the Court noted that pre-Nautilus
the Court might have been able to read the third step to be “at least one of the one or more
computers.” But, under Nautilus, the Court was “left to guess” the claim’s meaning Id. at *5.
Defendants assert that, here, the claim similarly presents “one or more” things, but the later
limitation refers to “the.” Defendants assert that the patentee made a conscious choice to depart
from the prior language, but it is unknown which among the many potential users is “the
particular user.” (Dkt. No. 110-2 at 29).
Defendants assert that the claim does not provide “implicit” antecedent basis. Defendants
assert that the claim does not describe how a potential user obtains a centralized access point
such that one of the potential users is “the particular user.” (Id.). Defendants assert that one
30
cannot determine if the recited centralized access point is assigned to a potential user in the
process of selection content or was already assigned to a user before then. Defendants assert that
dependent claim 17 exacerbates the ambiguity by requiring that “selecting and accessing are
implemented by the particular user.” Defendants assert that this suggests that a user already has a
centralized access point at the time content is selected from the distributed information access
point. (Id.). Defendants assert this is inconsistent with the claim language that says content is
presented to “one or more potential users.”
In reply, IV asserts that it is undisputed that “the particular user” refers to one of the “one
or more potential users” recited earlier in the claim. IV asserts that the sole issue is whether the
claim need also specify which user of the one or more potential users is “the particular user.” IV
asserts that the claim does not have to make such identification to be definite. (Dkt. No. 103 at
10). IV asserts that the claim has the same scope regardless of which user is “the particular user.”
IV asserts that in this manner, the present claims are different from those of Loyalty Conversion
Systems. IV asserts that in Loyalty Conversion Systems it was unclear which computers
performed the third step: the first set, the second set, or both sets. (Id. (citing Loyalty Conversion
Sys. Corp. v. Am. Airlines, Inc., No. 2:13-cv-655, 2014 LEXIS 122181 at *17–20 (E.D. Tex.
Sept. 2, 2014))). IV asserts that the Court would have still found the term definite, except that a
dependent claim recited that the third operation was performed by different computers than those
that performed the first two operations. Id.
Analysis
The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
[A] patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with reasonable
certainty. The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable.
31
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30 (2014). Here, the claim
language itself is reasonably certain. The presenting step is performed “to one or more potential
users.” Next, the selected content is “for addition to a centralized access of the particular user.”
In context of the entire claim, that the claim uses “the” instead of “a” does not generate
uncertainty. The “particular” user is merely one of the “one or more potential users.” This is not
a case such as Loyalty Conversion Systems. In Loyalty Conversion Systems, the independent
claim required “at least one of one or more computers detecting,” “at least one of one or more
computers granting,” and “the at least one of the one or more computers accepting.” A dependent
claim then required that “different ones of the one or more computers” performed the three
functions. The Court stated that, standing alone, the use of “the” in the independent claim did not
render the independent claim indefinite. The Court stated, however, that the inconsistent
dependent claim rendered the claim indefinite. Loyalty Conversion Sys. Corp., 2014 LEXIS
122181 at *17–20. This is not the case here. As in Loyalty Conversion Sys., the mere use of “the”
does not inherently render the claim indefinite. However, in contrast to Loyalty Conversion Sys.,
’177 Patent dependent claim 17 does not conflict with independent claim 16. Here, the dependent
claim adds the requirement that the “selecting and accessing are implemented by the particular
user.” Such a limitation is merely an additional requirement presented in the dependent claim
and does not conflict with the requirements of independent claim 16.
Defendants assert that of the many “potential users” that the independent claim
contemplates, the claim does not specify which one is “the particular user.” However, the claim
is not required to make such an identification. As presented in the claim, the “particular” user is
merely one of the “one or more potential users.” Defendants further assert that one cannot
determine if the recited centralized access point is assigned to a potential user in the process of
32
selection content or was already assigned to a user before then. Again, Defendants are adding
limitations to the independent claim that are not recited nor required by the claim.
The Court finds that the “centralized access point of the particular user” is definite.
The Court construes “centralized access point of the particular user” to mean “the
particular user’s network resource that can be used to access content.”
B. ’555 Patent Terms
1. “device key seed Sd” (claims 1, 7, 13-15)
IV’s Construction
“a digital value used to generate
cryptographic keys, referred to as Sd”
Defendants’ Construction
“a digital value referred to as Sd, generated by
the storage device, used to generate
cryptographic keys”
The parties dispute whether the construction should include “generated by the storage
device.”
Positions of the Parties
IV asserts that the claim language resolves the dispute as some claims explicitly require
the “storage device” to generate the device key seed, while others do not. IV notes that claim 1
recites that the “storage device is adapted to randomly generate the device key seed Sd.” IV notes
that, in contrast, claim 7 does not have such requirement and only recites “randomly generating a
device key seed Sd according [to] a time interval between two specific operations on a storage
device.” IV asserts that claim differences should end the inquiry. (Dkt. No. 91 at 20).
IV further asserts that the specification does not require the storage device to generate the
device key seed. IV asserts that some embodiments teach that the encryption/decryption module
generates the device key seed. ’555 Patent Abstract, 3:16–20. IV further asserts that the module
33
may or may not reside in the storage device. 2 (Dkt. No. 91 at 20). IV asserts that the specification
is, thus, broader than Defendants’ construction. IV further asserts that even if the specification
was not broader, Defendants’ construction fails because nothing in the specification clearly
limits the term to being always generated by the storage device. IV also notes that Defendants
did not include “generated by the storage device” in their IPR petition constructions. (Id.).
IV asserts that Defendants’ argument would render superfluous claim 1’s “storage
device” limitations. IV also asserts that Defendants’ argument ignores that the device key seed
could be linked to the storage device in other ways: the seed is based on information from the
storage device, even if generated elsewhere. (Dkt. No. 103 at 8).
Defendants assert that the plain language of the claims requires their construction.
Defendants assert that the term refers to “device key seed,” not a generic key seed. Defendants
assert that, in the specification, the device key seed is generated in response to operations or
interrupts that occur on the storage device. (Dkt. No. 110-2 at 21 (citing ’555 Patent 1:35–43,
2:10–19, Figures 1–2)). Defendants assert that IV’s construction reads out of the term the
relationship the “device key seed” has with the “storage device.” Defendants assert that IV’s
construction could, thus, refer to any digital value used to generate cryptographic keys.
Defendants assert that “device” must be given effect. (Id.). At the oral hearing, Defendants also
emphasized that dependent claim 2 recited a host key seed. Defendants asserted that the
construction needs to distinguish between a host key seed and a device key seed.
Analysis
Some of the claims explicitly require the storage device to be adapted to generate the
device key seed Sd (claim 1) and others do not (claims 7 and 15). The fact that some claims
2
IV does not provide specification citations for any embodiments in which the module does not reside with the
storage device.
34
explicitly include such requirements and other claims do not counsels that such limitation is not
found inherently in every claim. Phillips, 415 F.3d at 1314 (a term’s context in the various
claims can be very instructive).
Further, to the extent that the term “device key seed” requires a relationship to the
“storage device,” each of the claims explicitly recites that relationship. As noted, claim 1 states
that “the storage device is adapted to randomly generate the device key seed.” Claims 7 and 15
state that the device key seed is generated “according a time interval between two specific
operations on a storage device” and that the device key seed is “randomly generated in response
to interrupts that notify the storage device of occurrence of the two specific operations.” Thus,
though Defendants argue that “device” is not given effect in IV’s construction, it is clear that the
claims themselves provide the particular effect and relationship to the storage device that is
claimed in each instance.
Similarly, the claim language itself provides the relationship of the “host key seed” to the
host. Thus, for example, claim 2 describes the “host adapted . . . to generate a host key seed.”
And claims 8 and 16 describe “a host key seed generated by the host.” Thus, the claims
themselves provide the context of the key seeds to both the device and host.
Defendants have not pointed to any lexicography, disclaimer or disavowal requiring that
the “device key seed be generated in the storage device.” See Arlington Industries, Inc., 632 F.3d
at 1254 (“Even where a patent describes only a single embodiment, claims will not be read
restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
words or expressions of manifest exclusion or restriction.”) (internal citations omitted). As such,
Defendants’ construction is not mandated.
35
As noted above, the claims themselves provide the context of the meaning of a “device”
or “host” key seed in each claim. In light of the surrounding claim language, and the rejection of
Defendants’ additional limitations, the Court need only construe “key seed.”
The Court construes “key seed” to mean “a digital value used to generate
cryptographic keys.”
2. “storage device adapted to store data D, … wherein the storage device is adapted to
randomly generate the device key seed Sd in response to interrupts that notify the
storage device of occurrence of the two specific operations” (claim 1)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
(1) storing data D
(2) randomly generating the device key seed
Sd in response to interrupts that notify the
storage device of occurrence of the two
specific operations
Corresponding Structure
(1) a mobile device, such as a mobile phone,
USB handy disk, or a language learning
machine
(2) This term is indefinite for failure to
disclose adequate structure, including at least
failure to disclose an algorithm corresponding
to a function performed by computer
software.
The primary dispute between the parties is whether the term is a means-plus-function
term subject to 35 U.S.C. § 112, ¶ 6. If a means-plus-function term, Defendants assert the term is
indefinite for failure to disclose adequate structure/algorithm. As discussed below, the Court
finds that the term is not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6.
As such, the Court does not reach the indefinite dispute but rather addresses infra the proper
construction for the term “storage device.”
36
Positions of the Parties
IV asserts that “storage device” is a structural element. Further, IV cites to a case which
found “storage means” to not be a means-plus-function term because “storage” identifies a
structural term to one in the art. (Dkt. No. 91 at 22-–3 (citing i4i LP v. Microsoft Corp., No.
6:07-cv-113 (E.D. Tex. 2008))). IV also notes that technical dictionaries define “storage device”
in structural terms. (Id. at 23 (citing Dkt. No. 91 Ex. E at 424)). IV asserts that the “storage
device” used in the ’555 Patent relates to computer components, and the specification identifies
it as structure: “[t]the storage device 120 may be a mobile device, such as a mobile phone, USB
handy disk, or a language learning machine.” ’555 Patent 3:9–11.
Defendants assert that IV ignores the claim language surrounding “storage device.”
Defendants assert that such language recites function that makes the term a means-plus-function
term. (Dkt. No. 110-2 at 3–4). Defendants assert that claim 1 provides two functions for the
storage device: (1) store data and (2) randomly generate the device key seed in response to
interrupts. As such, Defendants assert not just any storage device is claimed. Further, Defendants
assert that the claim is drafted in means-plus-function form and would mean the same if “storage
device” was replaced with “storage means.” (Id.).
Defendants assert that the claim would be valid if the only function was the first function,
which is storing data. However, Defendants assert that there is no structure disclosed in the
specification for the second function. Defendants assert that the specification merely suggests a
general-purpose computer that is specially programmed through a variety of methods. (Id. at 4).
Defendants assert that, in such cases, an algorithm for performing the function must be disclosed.
Defendants assert that no such algorithm is disclosed and that the “storage device” is literally a
black box. (Id.).
37
In reply, IV asserts that it is undisputed that “storage device” has long been understood to
have structural meaning. IV asserts that under the Williamson test (whether the term is
“understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the
name for structure”) the term is not a means term. (Dkt. No. 103 at 2). IV asserts that it has
pointed to both intrinsic and extrinsic evidence that indicates “storage device” has a structural
meaning. IV asserts that Defendants have offered no evidence that “storage device” does not
carry a sufficiently definite structural meaning.
Even if a means-plus-function term, IV asserts that the term is still valid. IV asserts that
the specification states the key seed generation operations can be “implemented in hardware or
software” and can cause a processor to execute program code such that it operates analogous to
application specific logic circuits. (Id. at 3 (citing ’555 Patent 3:15–20, 4:48–65)).
Analysis
There is a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply when the term
“means” is not utilized. See Williamson, 792 F.3d 1339, 1348–1349 (Fed. Cir. 2015) (holding
that a presumption exists if the word “means” is not used but overturning the prior standard that
the presumption is “strong”). “The standard is whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id. at 1349. Thus, “[w]hen a claim term lacks the word ‘means,’ the presumption can
be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails
to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. Defendants have not overcome the presumption.
Defendants’ primary argument is that the claim recites function. Mere recitation of
function is not the proper legal test. See id. Defendants do not appear to contest that the term
38
“storage device” connotes a structural meaning to those of skill in the art. Similarly, the ’555
Patent clearly describes the term in structural terms: “[t]he storage device 120 may be a mobile
device, such as a mobile phone, USB hand disk or a language learning machine.” ’555 Patent
3:9–11. IV also presents extrinsic evidence from a Microsoft Computer Dictionary that indicates
the term carries structural meaning to those skilled in the art. (Dkt. No. 91 Ex. at 424 (“An
apparatus for recording computer data in permanent or semi-permanent form . . . the former
refers to random access memory (RAM) and the latter refers to disk drivers and other external
devices.”)). In the context of the intrinsic and extrinsic evidence, it is clear that “storage device”
is not merely a nonce word and does not operate as a substitute for “means.” Rather, the term
carries structural meaning. See Williamson, 792 F.3d at 1350–51.
The Court finds that the term “storage device adapted to store data D, … wherein
the storage device is adapted to randomly generate the device key seed Sd in response to
interrupts that notify the storage device of occurrence of the two specific operations” is not
a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6.
3. “wherein the device key seed Sd is said randomly generated in response to interrupts
that notify the storage device of occurrence of the two specific operations” (claims 7
and 15)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Function
randomly generating a device key seed Sd in
response to interrupts that notify the storage
device of occurrence of the two specific
operations
Corresponding Structure
This term is indefinite for failure to disclose
adequate structure, including at least failure to
disclose an algorithm corresponding to a
39
function performed by computer software.
The first dispute between the parties is whether the term is a means-plus-function term
subject to 35 U.S.C. § 112, ¶ 6. If a means-plus-function term, Defendants assert the term is
indefinite for failure to disclose adequate structure/algorithm. As discussed below, the Court
finds that the term is not subject to a means-plus-function analysis under 35 U.S.C. § 112, ¶ 6.
As such, the Court does not reach the indefinite dispute but rather addresses infra the proper
construction for the term “storage device.”
Positions of the Parties
IV asserts that the term is not a means-plus-function term. IV notes that the claim is a
method claim and asserts that method claims are drawn to processes and thus there is no
requirement that structure be disclosed. (Dkt. No. 91 at 26). IV asserts that the means-plusfunction analysis should end there. IV asserts that Defendants’ objections to the claim language
are written description and enablement arguments cloaked as a means-plus-function challenge.
IV asserts that such issues should be addressed in summary judgement and trial. IV notes that
this is especially true when the examiner raised written description and enablement rejections
and the patentees successfully traversed such rejections. (Id. at 27).
Defendants assert that the claim limitation states the device key seed is “randomly
generating in response to interrupts.” Defendants further assert that these interrupts occur on the
storage device, which means that the storage device performs the “generating” step. (Dkt. No.
110-2 at 8). Defendants assert that in prosecution, the applicants added the wherein clause at
issue. Defendants assert that, as to claim 1, the applicants stressed that the prior art did not teach
“a storage device [] adapted to randomly generate the device key seed Sd in response to
interrupts. . . .” (Id. (quoting Dkt. No. 99 Ex. 2 at IV-INSEDTX00000224-27)). Defendants
40
assert that with regard to claims 7 and 15, the applicant stated that they had amended the claim
“generally similar to claim 1” and that the same arguments applied. (Id. (quoting Dkt. No. 99 Ex.
2 at IV-INSEDTX00000224-27)). Defendants assert that the applicants, thus, incorporated the
structural limitations of the “storage device” into the method claims 7 and 15. (Dkt. No. 110-2 at
8).
Defendants cite to a District Court case for the proposition that when a method claim
recites a structural limitation but does not describe sufficiently definite structure for that
limitation, the claim term is a means-plus-function term. (Dkt. No. 110-2 at 8 (citing Intellectual
Ventures II, LLC v. AT&T Corp., No. 1:13-cv-116, 2015 WL 4138590 at *15 (W.D. Tex. Jul. 8,
2015))). Defendants assert this is the case here because “storage device” does not provide
sufficiently definite structure. Moreover, Defendants assert that the assigned function has no
corresponding algorithmic structure in the specification. (Dkt. No. 110-2 at 8–9).
In reply, IV asserts that the claims are not written in means-plus-function format. Further,
IV asserts that the prosecution history statements on which Defendants rely are not a clear and
unmistakable disclaimer regarding the “storage device.” IV notes that the arguments do not relate
to the storage device itself generating the key seed. Rather, IV asserts the arguments were
directed toward distinguishing the art as not teaching the generation of the key seed in response
to interrupts. (Dkt. No. 103 at 5 (citing Dkt. No. 99 Ex. 2 at IV-INSEDTX00000232-33)). IV
also asserts that even accepting Defendants’ position, the Applicant only stated that method
claims 7 and 15 were “generally similar” to claim 1. IV asserts that the Applicant never asserted
that the claims were identical. (Id.).
41
Analysis
The means-plus-function analysis regarding the use of “storage device” in claim 1,
presented above, is equally applicable to claims 7 and 15. Thus, the disputed term in claims 7
and 15 is not a means-plus-function term. Further, in the method claims 7 and 15, the language
Defendants point to is merely the language of the method steps. This is not a case as in
Williamson where it was found that the passage in question “is nonetheless in a format consistent
with traditional means-plus function claim limitations.” See Williamson, 792 F.3d at 1350. Here,
the passage in question is, in fact, the opposite, as it is not drafted in a format consistent with
traditional means-plus-function claim limitations.
The Court finds that “wherein the device key seed Sd is said randomly generated in
response to interrupts that notify the storage device of occurrence of the two specific
operations” is not a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6.
4. “storage device” (claims 1, 7, 15)
IV’s Construction
No construction is necessary. Plain and
ordinary meaning.
Alternatively, “volatile or nonvolatile
memory for storing data”
Defendants’ Construction
Should the Court conclude that this term is
not part of a term subject to 35 U.S.C. § 112,
¶ 6, defendants propose the following
construction:
“a device that has non-volatile
memory for the non-transitory
storage of data to be encrypted”
The parties dispute whether the storage device is limited to non-volatile memory and
whether the storage device must include the data to be encrypted.
Positions of the Parties
IV asserts that the ’555 Patent does not provide any special meaning to “storage device.”
IV cites to a variety of passages utilizing the term in a general sense. (Dkt. No. 91 at 21 (citing
42
’555 Patent Abstract, 1:24–26, 3:2–4)). IV asserts that absent lexicography, disavowal, or
disclaimer, the plain meaning should control. (Id.). If the term is construed, IV asserts its
construction is consistent with the intrinsic and extrinsic evidence. IV asserts that the intrinsic
evidence does not differentiate between volatile and non-volatile memory or require the storage
device to provide for non-transitory storage of data to be encrypted. IV asserts that the term
“volatile” does not appear in the patent and that Defendants did not include this term in their IPR
petition constructions. (Id.). IV asserts that the Microsoft Computer Dictionary defines a “storage
device” as encompassing volatile memory such as RAM:
An apparatus for recording computer data in permanent or semi-permanent form.
When a distinction is made between primary (main) storage devices and
secondary (auxiliary) storage devices the former refers to random access memory
(RAM) and the latter refers to disk drives and other external devices.
(Dkt. No. 91 Ex. E at 424).
Defendants assert that lay jurors may understand the term in other context (lockers,
luggage, etc.), but since this is software patent, what is relevant is the understanding of one
skilled in the software field. (Dkt. No. 110-2 at 21).
Defendants assert that its construction requires the memory to be permanent or semipermanent, while IV contends the memory can also be transitory or volatile. Defendants assert
that the Microsoft Computer Dictionary supports Defendants’ construction, because the
definition for “storage device” begins by stating that it is an apparatus that records data in
“permanent or semi-permanent form.” Defendants assert that the Microsoft Computer Dictionary
defines “volatile memory” as “[m]emory, such as RAM, that loses its data when the power is
shut off.” (Dkt. No. 99 Ex. 4 at 9). Defendants assert that clearly the patent did not contemplate
that the data would be lost when the power is shut off. (Dkt. No. 110-2 at 21–22).
43
Defendants further assert that the surrounding claim limitations point away from a
volatile memory. Defendants assert that the other claim limitations require the storage device to
(1) include an encryption/decryption module adapted to generate a device key seed and adapted
to apply the seed to data encryption of the data and (2) be adapted to randomly generate the
device key seed in response to interrupts. (Dkt. No. 110-2 at 22–23 (citing claim 1)). Defendants
assert the claimed functionality is inconsistent with the notion that the data could be lost at some
point in the process if the power were to be shut off. Defendants further assert that claim 15
recites a “tangible non-transitory computer-readable medium.” Defendants further assert that the
examples in the specification are examples of permanent or semi-permanent memory: “mobile
phone, USB disk, or a language learning machine.” ’555 Patent 3:9–11.
Defendants finally assert that IV’s construction does not require the storage device to
contain the data to be encrypted. Defendants assert that the claims have this requirement, citing
claim 1. Defendants note that claim 1 requires the storage device to be adapted “to store data D”
and then later the claim recites that the encryption/decryption module included in the storage
data device is “adapted to generate the device key seed Sd to data encryption of the data D.”
Defendants similarly assert that the specification states that the system “includes a storage device
storing data D and an encryption/decryption module” and that the encryption/decryption module
“applies the device key seed Sd and a seed generated by a host to data encryption.” ’555 Patent
1:35–43.
In reply, IV asserts that nothing in the specification excludes RAM, and the relevant
dictionary definition explicitly includes RAM. IV asserts that the specification discloses that the
storage device could be a “mobile device” (’555 Patent 3:9–11) and that mobile devices can
44
include processors with RAM. IV asserts there is no evidence to support the assertion that RAM
is inconsistent with the claims.
As to whether the claims require the “storage device” to contain the data to be encrypted,
IV asserts that the claims teach that this is not required. In particular, IV notes that though claim
1 requires the “storage device” to be “adapted to store data D,” claim 7 does not have such
restrictions. As to the specification passage at 1:35–43 relied upon by Defendants, IV notes that
the specification passage makes clear that this is “in an exemplary embodiment.” ’555 Patent
1:35–36.
Analysis
Defendants have not pointed to any lexicography, disclaimer or disavowal excluding
volatile memory such as RAM. See Arlington Industries, Inc., 632 F.3d at 1254 (“Even where a
patent describes only a single embodiment, claims will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using words or expressions
of manifest exclusion or restriction.”) (internal citations omitted). Absent such restrictions, the
plain meaning should control. Thorner v. Sony Computer Entertainment America LLC, 669 F.3d
1362, 1365–67 (Fed. Cir. 2012). The plain meaning evidence cited by both parties makes clear
that the plain meaning of “storage device” is inclusive of volatile memory such as RAM. (Dkt.
No. 91 Ex. E at 424); (Dkt. No. 99 Ex. 4 at 9).
Defendants make much of asserting that claimed functionality (claim 1) is inconsistent
with the notion that the data could be lost at some point in the process if the power were to be
shut off. However, nothing in the claim language or specification mandates such a position. As to
the claim 15 recitation of a “tangible non-transitory computer-readable medium,” this language
is directed toward the medium that stores the computer executable instructions. This language is
45
separate from the “storage device” language found later in the claim. The Court rejects
Defendants’ position that “storage device” is limited to “non-volatile” memory.
As to whether the “storage device” must include the data to be encrypted, again such a
limitation is merely an embodiment in the specification. Moreover, the fact that some claims
explicitly include such requirements and other claims do not further counsels that such limitation
is not found inherently in every claim. Phillips, 415 F.3d at 1314 (a term’s context in the various
claims can be very instructive). Having rejected the Defendants’ position that the storage device
is limited to non-volatile memory for non-transitory storage, the Court has resolved the dispute
between the parties. The Court thus finds that no further construction is needed.
The Court finds that “storage device” requires no further construction and the plain
and ordinary meaning applies.
5. “encryption/decryption module adapted to randomly generate a device key seed Sd
according to a time interval between two specific operations on the storage device,
and adapted to apply the generated device key seed Sd to data encryption of the data
D” (claim 1)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
No construction is necessary. Plain and
ordinary meaning.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Functions
(1) randomly generating a device key seed Sd
according to a time interval between two
specific operations on the storage device
(2) applying the generated device key seed Sd
to data encryption of the data D
Corresponding Structure
(1) This term is indefinite for failure to
disclose adequate structure, including at least
failure to disclose an algorithm corresponding
to a function performed by computer
software.
(2) The key generation algorithm described at
4:12-14, and the encryption mechanisms
46
described at 4:24-30, including “left rotating r
bits of authentication data” and TEA (Tiny
Encryption Algorithm)
The first dispute between the parties is whether the term is a means-plus-function term
subject to 35 U.S.C. § 112, ¶ 6. If a means-plus-function term, Defendants assert the term is
indefinite for failure to disclose an adequate structure/algorithm. IV does not propose any
construction under 35 U.S.C. § 112, ¶ 6.
Positions of the Parties
IV asserts that while in some contexts “module,” by itself, might not be sufficient definite
structure, the term “encryption/decryption module” in the ’555 Patent connotes structure. IV
cites for support Genband USA LLC v. Metaswitch Networks Ltd., No. 2:14-cv-33, 2015 U.S.
Dist. LEXIS 103512, *40 (E.D. Tex. Aug. 6, 2015). IV notes that Genband found that
“telecommunications interface module” was not a means-plus-function term. (Dkt. No. 91 at 24).
IV asserts that a person skilled in the art would know that an encryption/decryption module can
be implemented in hardware or software. IV asserts that this conforms to the specification which
states that “to reduce cost, a software implementation may be the best choice.” ’555 Patent 3:16–
17. IV asserts that the encryption mechanism can be “any symmetric encryption, and the
complexity and security level of a software encryption method can be selected according to the
hardware and security requirements.” Id. at 4:21–24. IV further notes that off-the-shelf
components could contain the module. (Dkt. No. 91 at 24–25 (citing a passage (’555 Patent
4:48–52) which states that the encryption may take the form of program code embodied on
tangible media such as floppy diskettes, CD-ROMS, hard drives or any other readable storage
medium)).
47
IV asserts that, in prosecution, to overcome a written description rejection, the patentee
emphasized that the limitation was adequately described because pseudo-random generators
were known in the art. In particular, in prosecution, IV emphasized prior art which indicated that
it was known that a seed number could be used for a pseudo-random generator. IV thus asserts
that one skilled in the art would understand that a device key seed could be obtained from a time
interval value. (Dkt. No. 91 at 25).
IV asserts that extrinsic evidence supports the finding that an “encryption/decryption
module” exists as stand-alone, structural software. In particular, IV cites to a variety of extrinsic
evidence software documentation for software programs that could be off-the-shelf
“encryption/decryption” modules. (Id. at 25–26).
Defendants assert that the claim limitation provides two functions for the module: (1)
randomly generate a device key seed according to a time interval between two operations on the
storage device and (2) apply the generated device key seed to data encryption of the data.
Defendants assert that these functions are recited in standard means-plus-function format and
that replacing “module” with “means” would yield the same claim meaning. Thus, Defendants
assert that according to Williamson, the claim term is a means-plus-function claim term. (Dkt.
No. 110-2 at 5).
Defendants assert that under Williamson, as a matter of law, “module” itself does not
provide structure. (Dkt. No. 110-2 at 5 (citing Williamson, 792 F.3d at 1350)). Defendants also
assert that just as the “distributed learning control” modifier of Williamson did not provide
structure to “module,” here “encryption/decryption” similarly only describes what the module
does. (Id.). Defendants assert that the structure, if any, only comes from a means-plus-function
analysis of the specification. Defendants assert that IV’s admission that the “module” can be any
48
hardware or software, so long as it performs the claimed function, confirms that the term is a
means-plus-function term. (Dkt. No. 105 at 3).
For the second function (“apply the generated device key seed…”), Defendants assert
that the specification provides structure. In particular, Defendants state that the specification lists
one algorithm for generating a key from the device key seed. (Dkt. No. 110-2 at 5 (citing ’555
Patent at 4:4–19)). Defendants also state that two algorithms for encrypting data with a key are
disclosed. (Id. at 5–6 (citing ’555 Patent at 4:24–27, 4:27–30)). But, Defendants assert that the
specification provides no algorithms for the first function: “randomly generate a device key seed
Sd according to a time interval….” Defendants assert that the patentee conceded this during
prosecution. (Id. at 6 (citing Dkt. No. 91 Ex. F at IV-INSEDTX-00000024-25)). Defendants
assert that although the specification states that the function could be performed by code loaded
on a general purpose computer, the specification provides no algorithm for the claimed function.
(Id.).
Defendants assert that IV merely argues that the specification discloses that hardware or
software could be utilized. Defendants assert, under the law, that is not enough. Defendants
assert that a computer implemented function still requires the algorithm to be disclosed. (Dkt.
No. 110-2 at 6). Defendants assert that if IV asserts that the specification discloses hardware
could be used, such a position does not save IV. Defendants assert that during prosecution, the
patentee argued that the function “generating a device key seed Sd according to a time
interval…” did not exist in the prior art. (Id. at 7). Defendants assert that this contradicts any
assertion that the patentee envisioned a specific structure for the claimed module at the time of
the invention. (Id.).
49
As to IV’s extrinsic evidence regarding encryption/decryption software, Defendants
assert that it is not relevant for two reasons. First, Defendants assert that none of the evidence
reflects the understanding of one in the art at the time of the invention (November 2004).
Second, Defendants assert that nothing in the extrinsic evidence reflects the claim language
regarding “generate a device key seed Sd according to a time interval between two specific
operations on the storage device.” (Id.).
In reply, IV asserts that the mere use of “module” does not end the inquiry as to whether
the term is a means-plus-function term. IV asserts that the extrinsic evidence cited by both
parties identifies encryption/decryption modules. (Dkt. No. 103 at 4 (citing Dkt. No. 91 at 25
(evidence that encryption/decryption structure often exists as a type of software structure) and
Dkt. No. 99-4 (providing a “cryptographic module” government specification))).
IV asserts that the intrinsic record teaches structure, in particular hardware or software.
As to software, IV asserts that the module may take the form of program code. (Dkt. No. 103 at 4
(citing ’555 Patent 3:15–16, 4:48–65)). IV quotes the patent: “[w]hen implemented on a general
purpose processor, the program code combines with the processor to provide a unique apparatus
that operates analogously to application specific logic circuits.” ’555 Patent 4:62–65. IV asserts
that the module thus acts like a circuit performing the claimed function. IV points to multiple
Federal Circuit cases that have found “circuits” to be sufficient structure. (Dkt. No. 103 at 4).
IV asserts that even if a means-plus-function term, Defendants have not shown that there
is a lack of corresponding structure. IV asserts that, as explained, disclosure of circuitry is
sufficient and, at a minimum, there is a genuine issue of fact on that point. (Dkt. No. 103 at 5).
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Analysis
“‘Module’ is a well-known nonce word that can operate as a substitute for “means” in the
context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Further, the claim term in question is
drafted in a traditional means-plus-function format. IV is correct that this Court, in Genband,
found that “telephone line interface module” is not subject to a means-plus-function analysis.
However, the evidence presented in that case made it clear that a “telephone line interface” was a
well-known particular structure. Thus, the “prefix” before “module” connoted particular
structure. Further, in the art “telephone line interface modules” reference physical telephone line
interface units that are interchangeable with other such units. In contrast, the evidence here does
not show that “encryption/decryption” carries a known structural context. The Genband Court
also found that other “module” terms, “packetization modules” and “echo cancellation modules,”
were means-plus-function terms that merely refer to any structure that can perform the
“packetization” and “echo cancellation” functions. The term here, “encryption/decryption
module” is more similar to those terms.
IV cites to extrinsic evidence that encryption/decryption mechanisms exist as software
(Dkt. No. 91 at 25–26) and that the term “cryptographic module” can be found in a government
specification (Dkt. No. 103 at 4). However, those references do not teach that
“encryption/decryption module” provides a known structural connotation. Further, as IV
asserted, the specification merely indicates that the term can mean any “software or hardware”.
(Dkt. No. 91 at 24); ’555 Patent 3:15–16. In context of the specification, the
“encryption/decryption module” is merely a black box that could be anything. Further, even if
limited to software, the specification does not seem to limit the term beyond the function as the
specification appears to teach that any software that performs the function is possible: “any
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symmetric encryption, and the complexity and security level of a software encryption method
can be selected according to the hardware and security requirements.” ’555 Patent at 4:21–24. In
light of the intrinsic and extrinsic evidence, on balance, the Court finds that Defendants have
overcome the presumption that, despite the absence of the word “means,” “encryption/decryption
module” is a means-plus-function term.
Having found the term to be a means-plus-function term, the claimed function and
corresponding structure must be identified. 3 The claim term itself states two functions: (1) “to
randomly generate a device key seed Sd according to a time interval between two specific
operations on the storage device,” and (2) “to apply the generated device key seed Sd to data
encryption of the data D.” The Court finds that no corresponding structure is disclosed for
function (1). Though the specification describes techniques for determining the time interval
(’555 Patent 3:34–56), the specification does not disclose structure that “to randomly generate a
device key seed Sd according to a time interval.” IV emphasizes that to overcome a written
description rejection, the patentee cited prior art to assert that the limitation was adequately
described because pseudo-random generators were known in the art for achieving this function.
However, the written description requirements and the requirements under § 112, 6 are different.
Under § 112, ¶ 6, even if the specification had explicitly stated 4 that known structure could be
utilized “to randomly generate a device key seed Sd according to a time interval,” such a
statement is not sufficient:
The inquiry is whether one of skill in the art would understand the specification
itself to disclose a structure, not simply whether that person would be capable of
implementing a structure. Med. Instrumentation, 344 F.3d at 1212 (citing Atmel,
198 F.3d at 1382). Accordingly, a bare statement that known techniques or
methods can be used does not disclose structure. To conclude otherwise would
3
4
The Court notes that IV has provided no alternative function and structure construction.
IV has not pointed to such statement.
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vitiate the language of the statute requiring "corresponding structure, material, or
acts described in the specification.”
Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953 (Fed. Cir. 2007) (finding a
term indefinite for failure to disclose corresponding structure for a § 112, ¶ 6 term); see also
Aristocrat Technologies Australia PTY Ltd v. International Game Technology, 521 F.3d 1328,
1334 (Fed. Cir. 2008) (finding that a statement in the specification that “appropriate
programming” within the capability of a worker in the art is not sufficient disclosure under
§ 112, ¶ 6).
The Court construes “encryption/decryption module adapted to randomly generate
a device key seed Sd according to a time interval between two specific operations on the
storage device, and adapted to apply the generated device key seed Sd to data encryption of
the data D” as a means-plus-function term subject to § 112, ¶ 6. The Court further finds the
term to be indefinite for failure to disclosure structure corresponding to the function “to
randomly generate a device key seed Sd according to a time interval between two specific
operations on the storage device.”
6. “the encryption/decryption module is further adapted to randomly generate the
device key seed Sd according to an occurrence time of one of the specific operations
as obtained from a clock” (claim 13)
IV’s Construction
This term is not subject to 35 U.S.C. § 112, ¶
6.
No construction is necessary. Plain and
ordinary meaning.
Defendants’ Construction
This term is subject to 35 U.S.C. § 112, ¶ 6.
Claimed Function
randomly generating a device key seed Sd
according to an occurrence time of one of the
specific operations as obtained from a clock
Corresponding Structure
This term is indefinite for failure to disclose
adequate structure, including at least failure to
disclose an algorithm corresponding to a
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function performed by computer software.
The dispute between the parties is substantially similar to the “encryption/decryption
module” term of claim 1.
Positions of the Parties
IV asserts that the dispute is the same as the prior encryption/decryption module dispute
regarding claim 1. IV asserts that the added language regarding the occurrence time obtained
from a clock does not change the issues presented. (Dkt. No. 91 at 28). IV asserts that the ’555
Patent teaches using time differences for operations and the use of a clock. ’555 Patent 3:27–29,
3:34–45, 3:52–56. IV asserts that because the “encryption/decryption module” is structural and
the ’555 Patent teaches using clock inputs to generate the seed, the claim term is definite. (Dkt.
No. 91 at 29).
Defendants assert that claim 13 adds a third function to the “encryption/decryption
module” of claim 1 (regarding the occurrence time obtained from a clock). Defendants assert that
for this function, the specification provides no algorithm. Though IV identifies a clock in the
specification, Defendants assert that IV does not identify the algorithm for carrying out the
claimed function. (Dkt. No. 110-2 at 6).
Analysis
The basic dispute between the parties is the same as with the preceding
“encryption/decryption module” term. For the reasons presented above, the Court finds that the
term is a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6. The function is “to randomly
generate the device key seed Sd according to an occurrence time of one of the specific operations
as obtained from a clock.” The passage at ’555 Patent 3:34–56 concludes with “the storage
device 120 can obtain the system clock wherein the operation occurred.” This disclosure
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addresses the functional language related to “one of the specific operations as obtained from a
clock.” However, for the reasons also described above for the preceding “encryption/decryption
module” term, the specification fails to provide structure for the function “to randomly generate
the device key seed Sd according to an occurrence time.” For the same reasons as discussed with
regard to the prior “encryption/decryption module” term, this “encryption/decryption module” is
also indefinite.
The Court construes “the encryption/decryption module is further adapted to
randomly generate the device key seed Sd according to an occurrence time of one of the
specific operations as obtained from a clock” as a means-plus-function term subject to
§ 112, ¶ 6. The Court further finds the term to be indefinite for failure to disclosure
structure corresponding to the function “to randomly generate the device key seed Sd
according to an occurrence time of one of the specific operations as obtained from a clock.”
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ORDERED that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are
ORDERED to refrain from mentioning any portion of this opinion, other than the actual
definitions adopted by the Court, in the presence of the jury. Any reference to claim construction
proceedings is limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least one
corporate officer possessing sufficient authority and control to unilaterally make binding
55
.
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 11th day of January, 2016.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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