Realtime Data LLC v. Oracle America, Inc.

Filing 41

MEMORANDUM OPINION AND ORDER. The Court adopts the constructions as set forth in this Order. Signed by Magistrate Judge John D. Love on 07/28/16. (mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
REALTIME DATA, LLC,
Plaintiff,

V.

ACTIAN CORPORATION ET AL.,
Defendants.
REALTIME DATA, LLC,
Plaintiff,

V.
ORACLE AMERICA, INC.,
HEWLETT PACKARD ENTERPRISE
COMPANY, and HP ENTERPRISE
SERVICES, LLC,
Defendants.

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CIVIL ACTION NO. 6:15-CV-463
RWS-JDL
LEAD CASE
JURY TRIAL DEMANDED

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CIVIL ACTION NO. 6:16-CV-88
RWS-JDL
LEAD CASE
JURY TRIAL DEMANDED

MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed claim terms in U.S. Patent No.
6,597,812 (“the ’812 Patent”), U.S. Patent No. 7,378,992 (“the ’992 Patent”), U.S. Patent No.
7,415,530 (“the ’530 Patent”), U.S. Patent No. 8,643,513 (“the ’513 Patent”), and U.S. Patent
No. 9,116,908 (“the ’908 Patent”). Plaintiff Realtime Data, LLC alleges that Defendants

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infringe the asserted patents.1 Plaintiff filed an opening claim construction brief (Doc. No.
305), to which Defendants filed a Response (Doc. No. 317), and Plaintiff filed a Reply (Doc.
No. 331). The parties additionally submitted a Joint Claim Construction Chart pursuant to P.R.
4-5(d). Doc. No. 336. On July 7, 2016, the Court held a claim construction hearing. Upon
consideration of the parties’ arguments, and for the reasons stated herein, the Court adopts the
constructions set forth below.
OVERVIEW OF THE PATENTS
Plaintiff contends that Defendants literally infringe the asserted patents. The ’992 and
’513 patents relate “generally to data compression and decompression and, more particularly, to
systems and methods for data compression using content independent and content dependent
data compression and decompression.” ’992 Patent at 1:22–26; ’513 Patent at 1:30–33. The
’992 Patent is entitled “Content Independent Data Compression Method and System.” None of
the disputed terms are found in the ’992 Patent. The ’513 Patent is entitled “Data Compression
Systems and Methods.” Claims 1 and 15 of the ’513 patent are representative and recite as
follows:
1. A method of compressing a plurality of data blocks, comprising:
analyzing the plurality of data blocks to recognize when an
appropriate content independent compression algorithm is
to be applied to the plurality of data blocks;
applying the appropriate content independent data compression
algorithm to a portion of the plurality of data blocks to
provide a compressed data portion;
analyzing a data block from another portion of the plurality of
data blocks for recognition of any characteristic, attribute,
or parameter that is indicative of an appropriate content
dependent algorithm to apply to the data block; and
applying the appropriate content dependent data compression
algorithm to the data block to provide a compressed data
1

Defendants include: EchoStar Corporation, Hughes Network Systems, LLC, Hewlett Packard Enterprise Co., HP
Enterprise Services, LLC, Riverbed Technology, Inc., Dell Inc., Oracle America, Inc., SAP America, Inc., and
Sybase, Inc.

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block when the characteristic, attribute, or parameter is
identified,
wherein the analyzing the plurality of data blocks to recognize
when the appropriate content independent compression
algorithm is to be applied excludes analyzing based only on
a descriptor indicative of the any characteristic, attribute, or
parameter, and
wherein the analyzing the data block to recognize the any
characteristic, attribute, or parameter excludes analyzing
based only on the descriptor.

15. A device for compressing data comprising:
a first circuit configured to analyze a plurality of data blocks to
recognize when an appropriate content independent
compression algorithm is to be applied to the plurality of
data blocks;
a second circuit configured to apply the appropriate content
independent data compression algorithm to a portion of the
plurality of data blocks to provide a compressed data
portion;
a third circuit configured to analyze a data block from another
portion of the plurality of data blocks for recognition of any
characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm to apply to the
data block; and
a fourth circuit configured to apply the appropriate content
dependent data compression algorithm to the data block to
provide a compressed data block when the any
characteristic, attribute, or parameter is identified,
wherein the first circuit is further configured to analyze the
plurality of data blocks to recognize when the appropriate
content independent compression algorithm is to be applied
by excluding analyzing based only on a descriptor
indicative of the any characteristic, attribute, or parameter,
and
wherein the third circuit is further configured to analyze the
data block to recognize the any characteristic, attribute, or
parameter by excluding analyzing based only on the
descriptor.
The ’812 Patent is entitled “System and Method for Lossless Data Compression and
Decompression” and relates “generally to data compression and decompression and, more
particularly to systems and methods for providing lossless data compression and decompression
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using a combination of dictionary and run length encoding.” ’812 Patent at 1:13–17. Claim 1 of
the ’812 patent is representative and recites as follows:
1. A method for compressing input data comprising a plurality of
data blocks, the method comprising the steps of:
detecting if the input data comprises a run-length sequence of
data blocks;
outputting an encoded run-length sequence, if a run-length
sequence of data blocks is detected;
maintaining a dictionary comprising a plurality of code words,
wherein each code word in the dictionary is associated with
a unique data block string;
building a data block string from at least one data block in the
input data that is not part of a run-length sequence;
searching for a code word in the dictionary having a unique
data block string associated therewith that matches the built
data block string; and
outputting the code word representing the built data block
string.
The ’530 and ’908 Patents are both entitled “System and Methods for Accelerated Data
Storage and Retrieval” and relate “generally to data storage and retrieval and, more particularly
to systems and methods for improving data storage and retrieval bandwidth utilizing lossless data
compression and decompression.” ’530 Patent at 1:15–18; ’908 Patent at 1:15–18. Claim 1 of the
’530 patent is representative and recites as follows:
1. A system comprising:
a memory device; and
a data accelerator, wherein said data accelerator is coupled to
said memory device, a data stream is received by said data
accelerator in received form, said data stream includes a
first data block and a second data block, said data stream is
compressed by said data accelerator to provide a
compressed data stream by compressing said first data
block with a first compression technique and said second
data block with a second compression technique, said first
and second compression techniques are different, said
compressed data stream is stored on said memory device,
said compression and storage occurs faster than said data
stream is able to be stored on said memory device in said
received form, a first data descriptor is stored on said
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memory device indicative of said first compression
technique, and said first descriptor is utilized to decompress
the portion of said compressed data stream associated with
said first data block.
Claim 1 of the ’908 patent is representative and recites as follows:
1. A system comprising:
a memory device; and
a data accelerator, configured to compress: (i) a first data block
with a first compression technique to provide a first
compressed data block; and (ii) a second data block with a
second compression technique, different from the first
compression technique, to provide a second compressed
data block;
wherein the compressed first and second data blocks are stored
on the memory device, and the compression and storage
occurs faster than the first and second data blocks are able
to be stored on the memory device in uncompressed form.

CLAIM CONSTRUCTION PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
the patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes
the claims, the rest of the specification and the prosecution history.

Phillips, 415 F.3d at

1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their
ordinary and customary meaning as understood by one of ordinary skill in the art at the time of
the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003). Claim language guides the Court’s construction of claim terms.
Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be
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highly instructive.” Id.

Other claims, asserted and unasserted, can provide additional

instruction because “terms are normally used consistently throughout the patent.”

Id.

Differences among claims, such as additional limitations in dependent claims, can provide
further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
specification ‘is always highly relevant to the claim construction analysis.

Usually, it is

dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his
own terms, give a claim term a different meaning than it would otherwise possess, or
disclaim or disavow some claim scope.

Phillips, 415 F.3d at 1316.

Although the Court

generally presumes terms possess their ordinary meaning, this presumption can be overcome
by statements of clear disclaimer.

See SciMed Life Sys., Inc. v. Advanced Cardiovascular

Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). This presumption does not arise when
the patentee acts as his own lexicographer.

See Irdeto Access, Inc. v. EchoStar Satellite

Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
claim ‘is rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough

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the specification may aid the court in interpreting the meaning of disputed language in the
claims, particular embodiments and examples appearing in the specification will not generally be
read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patentee may define a term during prosecution of the patent. Home
Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”).

The well-

established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir.
2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
(citations omitted)). “Indeed, by distinguishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
1372, 1378-79 (Fed. Cir. 1988) (quotation omitted).

“As a basic principle of claim

interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
evidence and protects the public’s reliance on definitive statements made during prosecution.”
Omega Eng’g, Inc., 334 F.3d at 1324.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on

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the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
treatises may help the Court understand the underlying technology and the manner in which one
skilled in the art might use claim terms, but such sources may also provide overly broad
definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
expert testimony may aid the Court in determining the particular meaning of a term in the
pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
prosecution history in determining how to read claim terms.” Id.
In patent construction, “subsidiary fact finding is sometimes necessary” and the court
“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
district court resolves a dispute between experts and makes a factual finding that, in general, a
certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
the invention, the district court must then conduct a legal analysis: whether a skilled artisan
would ascribe that same meaning to that term in the context of the specific patent claim under
review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
those findings are reviewed for clear error on appeal. Id.

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DISCUSSION
The parties dispute the meaning of the following claim terms:
I.
“recognition of any characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm” (’513 Patent, Claims 1 & 15)
Term/Phrase
recognition of any
characteristic,
attribute, or
parameter that is
indicative of an
appropriate content
dependent algorithm
(’513 Patent Claims
1 & 15)

Plaintiff’s Proposal
No construction necessary.
Alternatively: Recognition of any
data type, data structure, data
block format, file substructure,
file type, and/or any other
parameter that is indicative of an
appropriate content dependent
algorithm

Defendants’ Proposal
Recognition of any data type that is
indicative of a content dependent
algorithm associated with the data
type

Plaintiff contends that construction is unnecessary because this term is “understandable to
a person of ordinary skill and even a lay person.” Doc. No. 305 at 12. Plaintiff proposes an
alternative construction and asserts that the Court should reject Defendants’ proposed
construction because it “improperly limits the claimed phrase ‘characteristic, attribute, or
parameter’ to only one of the described parameters: ‘data type.’” Id. at 12–13. Essentially,
Plaintiff contends that Defendants have attempted to rewrite the claims by importing the “data
type only” limitation. Plaintiff argues that (1) the ’513 Patent claims do not recite “data type,”
(2) the patentee does not define “characteristic, attribute, or parameter” to mean “data type” only,
and (3) the patentee does not disavow the full scope of the phrase. Id. at 13.
Plaintiff contends that its alternative proposal, on the other hand, is consistent with the
plain meaning of term because it “is derived directly from the specification.” Id. at 12.
Specifically, the specification “provides explicit examples of data-content parameters in addition
to the data type that can be recognized with respect to content dependent algorithm, including all

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of the items in [Plaintiff’s] proposal.” Id. at 13 (citing ’513 Patent at 16:15–21; 4:42–45; 22:65–
23:4) (emphasis omitted). In other words, data type is merely one of several parameters that may
be used to identify an appropriate content dependent algorithm. Plaintiff argues that Defendants’
proposed construction improperly excludes some of the specification’s described embodiments.
Doc. No. 305 at 13 (citing SanDisk Corp. v. Memorex Prods., 415 F.3d 1278, 1285–86 (Fed. Cir.
2005)). Finally, Plaintiff argues that if the Court limited this term to “data type,” independent
claim 1 would be narrower than dependent claims 11 and 13. Doc. No. 305 at 13–14.
Defendant responds that Plaintiff’s proposal improperly broadens the meaning of
“characteristic, attribute, or parameter” because it ignores surrounding claim language. Doc. No.
317 at 8. Defendant contends that “data type” recognition is the only method of selecting a
content dependent algorithm, and therefore, “characteristic, attribute, or parameter” should be
construed to mean “data type” only. Id. at 8–9 (citing ’513 Patent at 3:55–66, 15:60–63, 16:15–
16, 16:24–27, 16:37–39, 22:65–23:4, Fig. 13(a), Fig. 15(a), Fig. 17(a)). Specifically, Defendants
argue that “‘data types, data structures, data block formats, file substructures, file types, and/or
any other parameters,’ are all ultimately reduced to ‘data type,’ because the specification teaches
that only ‘data type’ is ultimately indicative of when content dependent compression should be
applied.” Doc. No. 317 at 10–11. Defendants also point to this Court’s decision in Packeteer,
where it held that “content dependent data compression is applied to identified data types based
on the encoder’s ability to effectively compress the data type . . . .” Id. at 9 (citing Realtime
Data LLC d/b/a IXO v. Packeteer et al., No. 6:08-cv-00144-LED-JDL at Doc. No. 371 at 32
(E.D. Tex., June 22, 2009) (emphasis added). Finally, Defendants point to a statement Plaintiff
made to the Patent Office during the second reexamination of the ’992 Patent, where Plaintiff
stated “[t]he new descriptive matter defined ‘analyzing’ in the context of evaluating an incoming

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data stream in order to recognize, from the data itself, the associated data type.” Doc. No. 348 at
3 (emphasis omitted). Defendants argue that Plaintiff is now attempting to improperly expand the
meaning of this term. Id. at 3–4.
Claim 1 of the ’513 Patent states, in relevant part: “A method of compressing a plurality
of data blocks, comprising: . . . analyzing a data block from another portion of the plurality of
data blocks for recognition of any characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm to apply to the data block . . . .” Similarly, claim 15
states: “A device for compressing data comprising: . . . a third circuit configured to analyze a
data block from another portion of the plurality of data blocks for recognition of any
characteristic, attribute, or parameter that is indicative of an appropriate content dependent
algorithm to apply to the data block . . . .” Additionally, dependent claim 13 states: “The method
of claim 1, wherein the any characteristic attribute, or parameter is associated with a data block
format or a file type information associated with the data block.” These claims provide that the
“characteristic, attribute, or parameter” must be indicative of the appropriate content dependent
algorithm that is to be applied. Importantly however, the independent claims give no indication
that “characteristic, attribute, or parameter” should be interpreted as “data type.”
The specification is further instructive on this claim term. As discussed above,
“[a]lthough the specification may aid the court in interpreting the meaning of disputed language
in the claims, particular embodiments and examples appearing in the specification will not
generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d at 1323. Additionally, “[a] claim interpretation
that excludes a preferred embodiment from the scope of the claim ‘is rarely, if ever, correct.”

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Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004)
(quoting Vitronics Corp., 90 F.3d at 1583).
The specification states:
A content dependent data recognition module 1300 analyzes the incoming data
stream to recognize data types, data structures, data block formats, file
substructures, file types, and/or any other parameters that may be indicative of
either the data type/content of a given data block or the appropriate data
compression algorithm or algorithms (in serial or parallel) to be applied.
’513 Patent at 16:15–21; see also id. at 4:42–45 (“the step of analyzing the data block
comprising analyzing the data block to recognize one of a data type, data structure, data block
format, file substructure, and/or file types”); 22:65–23:4 (“a content dependent data recognition
and[/]or estimation module 1700 is utilized to analyze the incoming data stream for recognition
of data types, data strictures [sic], data block formats, file substructures, file types, or any other
parameters that may be indicative of the appropriate data compression algorithm . . . to be
applied.”).
This language indicates that any of the parameters listed—including but not limited to
data type—can be used to identify an appropriate data compression algorithm. Defendants
contend that “data type” is the only parameter able to identify an appropriate data compression
algorithm and that the other parameters listed within the specification are merely proxies for such
identification. In support, Defendants have pointed to sections of the specification that state data
type can be used to select an appropriate compression algorithm (citing ’513 Patent at 16:15–16,
16:37–39), but those preferred embodiments cannot exclude other parameters that may be used
(see ’513 Patent at 4:42–45, 16:15–21, 22:65–23:4). Globetrotter Software, 362 F.3d at 1381.
Defendants also rely on this Court’s decision in Packeteer, where the Court construed
“content dependent data compression.” Notably however, the patent at issue in Packeteer did not

12

define (or even discuss) “any characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm.” Instead, the actual patent language in Packeteer
limited the parameters to include data type only. See U.S. Patent No. 6,624,761 (the ’761 Patent)
at Claim 1 (“analyzing a data block of an input data stream to identify a data type of the data
block, the input data stream comprising a plurality of disparate data types; performing content
dependent data compression . . . if the data type . . . is identified; performing content
independent data compression . . . if the data type . . . is not identified.”); see also U.S. Pat. No.
7,161,506 (the ’506 Patent) at Claim 1 (“analyzing a data block of an input data stream to
identify one or more data types of the data block . . . .”). The ’513 Patent, however, provides no
similar limitation, and therefore, the Packeteer construction does not support Defendants’
proposal.
On the other hand, lending additional support to Plaintiff’s interpretation of this term are
dependent claims 11 and 13. Claim 11 states “[t]he method of claim 1, wherein the analyzing the
plurality of data blocks includes analyzing data structures or file substructures associated with
the plurality of data blocks,” and Claim 13 states “[t]he method of claim 1, wherein the any
characteristic, attribute, or parameter is associated with a data block format or a file type
information associated with the data block.” ’513 Patent at Claims 11 and 13. If the Court were
to construe “characteristic, attribute, or parameter” as limited to data type, it would render these
dependent claims nonsensical because those claims are not limited to data type. The dependent
claims would be broader than independent Claim 1, which indicates that Defendants’
construction is not in accordance with proper claim construction principles.
If the Court were to limit this term to “data type” only, such a finding would exclude
preferred embodiments. The specification discloses preferred embodiments that allow for the use

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of parameters other than data type to identify a compression algorithm. ’513 Patent at 4:42–45,
16:15–21, 22:65–23:4. Accordingly, the Court rejects Defendants’ proposal because it is
inconsistent with portions of the specification. See Globetrotter Software, Inc., 362 F.3d at 1381.
Finally, with respect to Defendants’ argument that Plaintiff concedes to the use of only
data type in the second ’992 Patent reexamination, the Court does not agree. The portion of the
reexamination Defendants are referencing is depicted below:

Doc. No. 348, Ex. 1 at 11 (REALTIME039863).
As shown above, the patentee explained that merely retrieving a data type descriptor is
not “analyzing.” Further, the patentee made the above-reproduced statements in the context of
claims that included “data type” limitations. See id. at 10 (REALTIME039862). Therefore,

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Defendants’ assertion that the reexamination solidifies their argument that this term is limited to
data type only is unpersuasive.
Having resolved the parties’ dispute, the Court finds the phrase “recognition of any
characteristic, attribute, or parameter that is indicative of an appropriate content dependent
algorithm” requires no construction.
II.
“content dependent algorithm/content dependent data compression algorithm/
content dependent compression algorithm” (’513 Patent, Claims 1, 3, 4, 6, 10, 14, 15, 18, &
22) and “content independent compression algorithm / content independent data
compression” (’513 Patent, Claims 1, 3, 4, 10, 12, 15, 18, & 20)
Claim Term
content dependent
algorithm /
content dependent
data compression
algorithm /
content dependent
compression
algorithm (’513
Patent, Claims 1, 3,
4, 6, 10, 14, 15, 18, &
22)
content independent
compression
algorithm / content
independent data
compression (’513
Patent, Claims 1, 3,
4, 10, 12, 15, 18, &
20)

Plaintiffs’ Proposal
Content dependent compression
is compression that is applied
using one or more encoders based
on the encoder’s (or encoders’)
ability to effectively encode the
data type or content of the data
block

Defendants’ Proposal
Compression algorithm that is
applied to input data that is not
compressed with content
independent data compression, the
compression using one or more
encoders selected based on the
encoder’s (or encoders’) ability to
effectively encode the data type of
the data block

Content independent compression
is compression that is applied
using one or more encoders
without regard to the encoder’s
(or encoders’) ability to
effectively encode the data type
or content of the data block

Compression [algorithm] that is
applied to input data that is not
compressed with content dependent
data compression, the compression
applied using one or more encoders
without regard to the encoder’s (or
encoders’) ability to effectively
encode the data type of the data
block

The parties’ argument with respect to these terms revolves around whether encoders are
selected based on their ability “to effectively encode the data type or content,” as Plaintiff
contends or “to effectively encode the data type,” as Defendants propose. The parties have
stipulated that the Court should construe “data type” as “categorization of the data as one of

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ASCII, image data, multimedia data, signed and unsigned integers, pointers, or other data type.”
Doc. No. 336-1 at 3. The parties have not agreed upon a construction of—nor have they asked
the Court to construe—“content.”
Plaintiff urges that it would be improper to import the “data type” limitation into this
term. Doc. No. 305 at 15. Plaintiff argues that the claim language itself—and for that matter, the
language within this term—is sufficient to define the term. Id.; ’513 Patent, Claim 1. Plaintiff
also contends that the specification supports its position that data type and/or content can indicate
the appropriate data compression algorithm. Doc. No. 305 at 16–18 (citing ’513 Patent at 4:42–
47; 16:15–21; 18:1–4; 18:17–21; 19:13–18; 20:44–48; 21:2–6; 21:65–22:3; 22:64–23:7). In
further support, Plaintiff points to Defendants’ agreement (in a recently filed petition for inter
partes review) that content dependent compression is based on the data type or content of the
data. Doc. No. 305 at 18. Plaintiff contends that because Defendants seek to limit this term to
“data type” only, their proposal improperly excludes a preferred embodiment. Id.
Additionally, Plaintiff contends that—although Packeteer and Morgan Stanley have
previously

construed

“content

dependent

compression”

and

“content

independent

compression”—collateral estoppel does not apply here. Id. at 17. Plaintiff argues that those cases
involved different patents, different claims, and different claim construction arguments.2 Id.;
Doc. No. 331 at 4. Further, Plaintiff argues that unlike the ’513 Patent, the Packeteer and
Morgan Stanley patents expressly recited “data type,” and “each side proposed constructions that
included only ‘data type,’ and whether ‘data type or content’ should be included in the
construction was not at issue or litigated in the prior cases.” Doc. No. 305 at 18.

2

Plaintiff also contends that collateral estoppel does not apply because this issue was not necessary to support the
judgment in Morgan Stanley. Doc. No. 331 at 4.

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Defendants argue that the ’513 Patent requires encoding (or selecting a compression
algorithm) based on the ability to effectively encode the data type, not the content. Doc. No. 317
at 9 (citing ’513 Patent at 16:37–39). Defendants point to this Court’s decision in Packeteer,
arguing that there, “both this Court and Plaintiff agreed with Defendants’ proposed
construction,” and “both this Court and Plaintiff repeatedly stated that the constructions for those
terms were based on ‘data type’ and not ‘content.’”3 Doc. No. 317 at 15 (emphasis and internal
citations omitted). Defendants argue that the Court must therefore construe these terms according
to its decision in Packeteer. Id. at 15 (citing SightSound Technologies, LLC v. Apple Inc., 809
F.3d 1307, 1316 (Fed. Cir. 2015) (stating “[w]here multiple patents ‘derive from the same parent
patent application and share many common terms, we must interpret the claims consistently
across all asserted patents.’”). At the Markman hearing, Defendants also argued that (1) because
“content” has not been construed, a jury could become confused if the Court construes this term
to include “content” and (2) the specific content of a photo (such as whether a picture shows a
dog or a house) does not dictate which algorithm is selected; instead, the algorithm is based on
the ability to effectively encode the data type.
Defendants argue that collateral estoppel applies here and, because their construction
follows the decision in Morgan Stanley, the Court should find their construction appropriate.
Although Plaintiff argues that collateral estoppel does not apply because the ’513 Patent is a
different patent than the patent at issue in Morgan Stanley, the claim terms are exactly the same,
and “the Federal Circuit has held that collateral estoppel applies to common issues in actions
involving related patents.” Doc. No. 317 at 14 (citing Mycogen Plant Sci., Inc. v. Monsanto Co.,
252 F.3d 1306, 1310 (Fed. Cir. 2001), cert. granted, judgment vacated on other grounds, 535

3

In Packeteer, the patents at issue were parent patents to the ’513 Patent and shared a common specification with
the ’513 Patent.

17

U.S. 1109, 122 S. Ct. 2324, (2002)) (emphasis omitted). Defendants urge “[h]ow the
compression algorithm is chosen in not substantially different in the ’513 Patent as compared
with its parent patent[, the ’747 Patent].” Doc. No. 317 at 14.
Defendants’ collateral estoppel argument is unconvincing. Collateral estoppel requires
four conditions: “(1) the issue under consideration is identical to that litigated in the prior action;
(2) the issue was fully and vigorously litigated in the prior action; (3) the issue was necessary to
support the judgment in the prior case; and (4) there is no special circumstance that would make
it unfair to apply the doctrine.” Winters v. Diamond Shamrock Chemical Co., 149 F.3d 387, 391
(5th Cir. 1998). See also Diet Goal Innovations LLC v. Chipotle Mexican Grill, Inc., 70 F. Supp.
3d 808, 811 (E.D. Tex. 2014) (citing Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424
F.3d 1229, 1232 (Fed. Cir. 2005) (explaining the fourth element as “the person against whom
collateral estoppel is asserted had a full and fair opportunity to litigate the issues in the prior
action.”). The parties’ dispute primarily centers on the first element.
Plaintiff is correct that the ’513 Patent was not at issue in Morgan Stanley and Packeteer.
However, the elements of collateral estoppel listed above do not require the patents to be
identical; instead, for collateral estoppel to apply, the issue under consideration must be identical
to what was previously litigated. Nevertheless, collateral estoppel does not apply. The issue here
is whether the ’513 Patent requires “data type” and excludes “content,” and this issue was not
present in Morgan Stanley or Packeteer. The issue in Packeteer was whether content dependent
data compression and content independent data compression required one encoder or a plurality
of encoders, and the issue in Morgan Stanley was the order in which content dependent and
content independent data compression occur. Doc. No. 305-7 at 28–35; Doc. No. 305-9 at 17–18.
Further, the patents in Packeteer and Morgan Stanley specifically recited “data type,” and the

18

parties there did not dispute whether the construction should include “data type” to the exclusion
“content.” Unlike the patents at issue in Morgan Stanley and Packeteer, under the terms of the
’513 Patent, to determine the appropriate encoder(s) does not require that one only look at the
data type.
Accordingly, collateral estoppel does not apply here because Morgan Stanley and
Packeteer are distinguishable from the case presently before the Court: (1) the claims at issue in
Morgan Stanley and Packeteer expressly recited “data type” in the claims, (2) Morgan Stanley
involved an issue of timing, and (3) Packeteer involved an issue involving the number encoders.
See, e.g., ’761 Patent at Cl. 1 (“identify a data type of the data block”); ’506 Patent at Cl. 1
(“identify one or more data types of the data block”).4 Thus, the issue here is not “identical” to
the issue decided in the earlier proceeding.5
Other than the collateral estoppel issue, these disputed terms present essentially the same
issues as the “recognition of any characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm” term addressed above. For the following reasons and
for the same reasons as discussed above, the Court rejects Defendants’ proposal limiting the
constructions to “data type.”
The ’513 Patent claims themselves do not specifically recite “data type.” Instead, the
claims only indicate that the appropriate content dependent algorithm is derived from the

4

Likewise, the claims cited by Defendants as purportedly being similar, Claims 14 and 19 of United States Patent
No. 7,714,747, recite “data block type.”
5
See, e.g., DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc., 70 F. Supp. 3d 808, 811 (E.D. Tex. 2014); cf.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1137 (Fed. Cir. 1985) (reissue claims were not substantially
identical to the original claims, and therefore collateral estoppel did not apply); Ohio Willow Wood Co. v. Alps S.,
LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“Our precedent does not limit collateral estoppel to patent claims that
are identical. Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel
should apply.”) (citations omitted).

19

recognition of “any characteristic, attribute, or parameter that is indicative” of such algorithm.
Independent claim 1 recites:
1. A method of compressing a plurality of data blocks, comprising:
analyzing the plurality of data blocks to recognize when an
appropriate content independent compression algorithm is
to be applied to the plurality of data blocks;
applying the appropriate content independent data compression
algorithm to a portion of the plurality of data blocks to
provide a compressed data portion;
analyzing a data block from another portion of the plurality of
data blocks for recognition of any characteristic,
attribute, or parameter that is indicative of an
appropriate content dependent algorithm to apply to the
data block; and
applying the appropriate content dependent data compression
algorithm to the data block to provide a compressed data
block when the characteristic, attribute, or parameter is
identified,
wherein the analyzing the plurality of data blocks to recognize
when the appropriate content independent compression
algorithm is to be applied excludes analyzing based only on
a descriptor indicative of the any characteristic, attribute, or
parameter, and
wherein the analyzing the data block to recognize the any
characteristic, attribute, or parameter excludes analyzing
based only on the descriptor.
’513 Patent at Claim 1. Additionally, although the specification states “[e]ncoding techniques are
selected based upon their ability to effectively encode different types of input data,” it also states
“[a] content dependent data recognition module 1300 analyzes the incoming data stream to
recognize data types, data structures, data block formats, file substructures, file types, and/or any
other parameters that may be indicative of either the data type/content of a given data block or
the appropriate data compression algorithm or algorithms (in serial or in parallel) to be applied.”
’513 Patent at 12:54–56; 16:15–21; 16:37–39 (emphasis added). The specification further
explains that “content dependent data compression is applied to a given data block when the

20

content of a data block cannot be identified or is not associated with a specific data compression
algorithm.” ’513 Patent at 18:1–4 (emphasis added). The specification states “[i]f the data stream
content is not recognized utilizing the recognition list(s) module 1310 (step 1408) the data is
routed to the content independent encoder module . . . [,]” but “[i]f the data stream content is
recognized utilizing the recognition list(s) or algorithm(s) module 1310 (step 1434) the
appropriate content dependent algorithms are enabled and initialized (step 1436).” ’513 Patent at
18:17–20; 19: 13–16. (emphasis added).
Thus, the Court construes the phrase “content dependent data compression
algorithm/content dependent compression algorithm” as a “compression algorithm that is applied
to input data that is not compressed with content independent data compression, the compression
using one or more encoders selected based on the encoder’s (or encoders’) ability to effectively
encode the data type or content of the data block.” Further, the Court construes the phrase
“content independent compression algorithm/content independent data compression” as
“compression algorithm that is applied to input data that is not compressed with content
dependent data compression, the compression applied using one or more encoders without regard
to the encoder’s (or encoders’) ability to effectively encode the data type or content of the data
block.”
III.

“data accelerator” (’908 Patent, Claim 1; ’530 Patent, Claims 1 & 24)

Claim Term

Plaintiffs’ Proposal

Defendants’ Proposal

data accelerator
(’908 Patent, Claim
1; ’530 Patent,
Claims 1 & 24)

Hardware or software with one or
more compression encoders
and/or decoders

One or more encoders, one or more
decoders, and associated input and
output buffers, input and output
counters, compression ratio
modules, and descriptor/extraction
modules

21

With respect to this term, Plaintiff argues that Defendant is again attempting to import
limitations into the claims from preferred embodiments. Doc. No. 305 at 23. Plaintiff’s argument
is twofold: (1) “data accelerator” requires “one or more compression encoders and/or decoders”
but does not necessarily require both as Defendants suggest, and (2) the additional components
Defendants have included in their proposal are not required, and in fact, the specification speaks
to the optional nature of some of these additional components. Doc. No. 305 at 23–24 (citing
’530 Patent at 11:32–34 & 14:42–48; ’908 Patent at Claim 1 & 18:50–62).
In response, Defendants argue that because this term was coined by the inventor, the
Court must look to the intrinsic evidence to derive the meaning of “data accelerator.” Doc. No.
317 at 21–22 (citing Fractus, S.A. v. Samsung Elec. Co., Ltd., No. 6:09-cv-203, Doc. No. 526 at
8 (E.D. Tex. Dec. 17, 2010); Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2012)).
Defendants contend the claims and specification “provide clear guidance” on the meaning of this
term. Doc. No. 317 at 22. At the hearing, Defendants argued that despite the representation in
Figure 1, which depicts a data storage accelerator and a data retrieval accelerator, the inventor
did not differentiate between those two data accelerators, but instead the data accelerator has the
functionalities of both the storage and retrieval accelerators. Defendants point to independent
Claim 1—which provides for a single data accelerator—and to dependent claims that refer to
“that” single data accelerator. Id. (citing ’530 Patent at Claims 1, 3, 4, 5; ’908 Patent at Claims 1,
4, 5, 6, 7). Therefore, Defendants argue, the claims of the patents that refer to storage and
retrieval accelerators “invoke the same data accelerator” for compression and decompression
functions. Doc. No. 317 at 22 (emphasis in original). Due to the plain language of the claims,
Defendants assert that “the single data accelerator of the claims must include the functionality of

22

both the data storage accelerator and data retrieval accelerators and therefore must include both
encoders and decoders.” Doc. No. 317 at 23 (emphasis in original).
With respect to the additional components contained in Defendants’ proposal, Defendants
state “the data accelerator comprises other required and optional components,” and because
Figures 8 and 9 of the Patents provides for these additional components, they are to be included
in the term’s construction. Id. Defendants contend that Figures 8 and 9 are the only place the
inventor provides a definition for this term, and therefore “the patentee’s lexicography must
govern the claim construction analysis.” Id.at 24 (citing Braintree Labs., Inc. v. Novel Labs.,
Inc., 749 F.3d 1349, 1356 (Fed. Cir. 2014). Specifically, Defendants state “merely because some
components are optional does not mean that the data accelerator cannot include them. If these
optional components are present and associated with the encoding and decoding, they are a part
of the data accelerator . . . .” Id.
The term “data accelerator” appears in independent Claim 1 of the ’908 Patent and
independent Claims 1 and 24 of the ’530 Patent. Claim 1 of the ’530 Patent is representative of
the issue and recites, in relevant part, “[a] system comprising: a memory device; and a data
accelerator, wherein said data accelerator is coupled to said memory device, a data stream is
received by said data accelerator in received form, . . . said data stream is compressed by said
data accelerator to provide a compressed data stream . . . , said compressed data stream is stored
on said memory device.” Importantly, the independent claims do not address the issue of data
retrieval.6 Accordingly, when evaluating the claim language alone, it appears that “data
accelerator” requires only encoders because the independent claims require only the data storage
function.

6

Other than stating that a “first descriptor is utilized to decompress” a portion of the data stream, there no mention
of decompressing and retrieving the data. ’530 Patent at Claims 1 & 24.

23

The data retrieval functionality arises in the dependent claims: “said data accelerator
retrieves said first descriptor and said compressed data stream from said memory device,” “said
data accelerator retrieves said compressed data stream from said memory device,” and “said data
accelerator retrieves said compressed data stream from said memory device and said
decompression of the portion of said compressed data stream associated with said first data block
is performed by said data accelerator.” ’530 Patent at Claims 3–5; see ’908 Patent at Claims 4–6.
The retrieval function in the dependent claims should not be imported into the independent
claims. Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006).
That is, the dependent claims merely set forth additional configuration limitations upon the
systems recited in the independent claims.
Defendants contend that Figures 8 and 9 (depicted below) are the patentee’s definition of
the accelerator.

’908 Patent, Figure 8; ’530 Patent, Figure 8.

24

’908 Patent, Figure 9; ’530 Patent, Figure 9. Defendants urge that all components of Figures 8
and 9 must be included in the construction of “data accelerator” because those figures provide
the only definition of the term. The Court disagrees because the specification makes clear that
the figures illustrated above merely include preferred embodiments of a “data accelerator.”
For instance, the specification states “the embodiment of the data storage accelerator 10
of FIG. 8 is exemplary of a preferred compression system which may be implemented in the
present invention, and [ ] other compression systems and methods known to those skilled in the
art may be employed for providing accelerated data storage in accordance with the teachings
herein.” ’530 Patent at 13:16–22 (emphasis added); see also ’530 Patent at 14:42–48 (explaining
a similar concept). The specification also states “the input buffer 15 and counter 20 are not
required elements of the present invention.” ’530 Patent at 11:33–34; ’908 Patent at 11:59–60.
Additionally, the ’908 specification states that Figure 8 is “a preferred system for accelerated
data storage” and Figure 9 is “a preferred system for accelerated data retrieval.” ’908 Patent at
11:46–47, 13:64–66.
25

The claims and specification illustrate that (1) only encoders are required for a
functioning “data accelerator” and (2) the additional components shown in Figures 8 and 9 are
not required components of a “data accelerator” and are instead merely preferred embodiments
of the invention that could be employed. Because Defendants’ proposal would require the Court
to find that a “data accelerator” must include both encoders and decoders, and because Plaintiff’s
proposal would allow for a “data accelerator” to include only a decoder, the Court rejects both
parties’ proposals.
As such, the Court construes the term “data accelerator” as “hardware or software with
one or more compression encoders.”
IV. “descriptor” (Claim 31)
Claim Term
descriptor
(’530 Patent, Claims
1, 2, & 24; ’908
Patent, Claims 2, 4,
& 22)

Plaintiffs’ Proposal
Any recognizable data token or
descriptor [indicative of said/the
compression technique]

Defendants’ Proposal
Recognizable data that is appended
to the encoded data for specifying
[said/the compression technique]

The parties’ arguments with respect to this term primarily revolve around whether the
“descriptor” is “appended” to the data. The specification discloses what Plaintiff has identified as
an express definition of this term:
A description module 38, operatively coupled to the compression ratio module 35,
appends a corresponding compression type descriptor to each encoded data block
which is selected for output so as to indicate the type of compression format of
the encoded data block. A data compression type descriptor is defined as any
recognizable data token or descriptor that indicates which data encoding
technique has been applied to the data.
Doc. No. 305 at 25 (citing ’530 Patent at 12:33-41) (emphasis added). Plaintiff argues that
because the patentee assigned this definition to “descriptor,” the Court must find that definition
controlling. Doc. No. 305 at 24–25 (citing Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d

26

1349, 1356 (Fed. Cir. 2014); Phillips, 415 F.3d at 1316). Plaintiff contends that the Court also
construed this term according the above definition in its MetroPCS decision, which further
indicates that it is the proper construction for this term.7
Additionally, Plaintiff urges that (1) Defendants’ proposed “appended” language would
limit the term to a particular embodiment, and (2) Defendants’ proposed “specifying” limitation
is directly contrary to the specification. Doc. No. 305 at 25–26. Plaintiff argues that the single
paragraph in the specification referring to appending the descriptor does not provide an absolute
requirement of appendage. Id. at 25 (citing ’530 Patent at 13:61–14:15). To the contrary, Plaintiff
urges that the “specification affirmatively states that specifying the encoder is not a required
function.” Doc. No. 305 at 26 (citing ’530 Patent at 12:41–46) (emphasis omitted). Therefore,
Plaintiff asserts that Defendants’ proposed construction “conflicts with the language of the claim
itself.” Doc. No. 305 at 26 (citing CytoLogix Corp. v. Ventana Medical Sys., Inc., 424 F.3d 1168,
1173–74 (Fed. Cir. 2005)).
Further, Plaintiff argues Morgan Stanley is not binding or persuasive because that case
involved different patents. Doc. No. 305 at 27. In particular, Plaintiff argues that Morgan
Stanley relied upon figures and claim language not present here.

Doc. No. 331 at 8–9.

Specifically, Plaintiff argues that the patents in Morgan Stanley involved extracting a descriptor
from a data packet, but that limitation is not present in the patents here. Additionally, Plaintiff
argues that unlike the figures in Morgan Stanley, none of the figures of the patents at issue recite
“append.” Therefore, Plaintiff contends that collateral estoppel does not apply in this case.
Plaintiff asserts that unlike the patents in Morgan Stanley, independent Claim 24 of the ’530
7

In MetroPCS, the Court evaluated “descriptor” as the term was used in the ’530 Patent. Realtime Data LLC v.
MetroPCS Texas, LLC, Case No. 6:10cv493 LED-JDL (E.D. Tex. Oct. 1, 2012). Defendants argue that because
MetroPCS was issued more than a year before Morgan Stanley, MetroPCS does not lend support to Plaintiff’s
argument. At the hearing, Defendants also argued that unlike here, the construction in MetroPCS was based on the
undisputed portion of the parties’ arguments.

27

Patent requires a descriptor, but the Patent does not mention appendage until dependent Claim
25. At the hearing, Plaintiff argued that not only does the claim language not require appendage,
but the specification also does not require the descriptor to be appended. Plaintiff also pointed
out that Defendants rely on extrinsic evidence that Plaintiff believes is contradictory to the
intrinsic evidence. Further, Plaintiff argues that Dr. Zegler’s declaration explains that descriptors
can be appended or not appended, but the claims here do not require either. See Doc. No. 305-15
at 16–18.
Defendants respond that “the same intrinsic evidence relied on by the Federal Circuit [in
Morgan Stanley] equally applies to construing the ‘descriptor’ term found in the ’530 and ’908
Patents.” Doc. No. 317 at 25. Specifically, the Federal Circuit relied on a sentence that preceded
the patentee’s explanation of “descriptor,” which stated that the system “appends a
corresponding compressing type descriptor to each encoded data block . . . so as to indicate the
type of compression format.” Id. Defendants assert that the preceding sentence also appears in
the specification of the ’530 and ’908 Patents, and therefore the Court should rely on the
preceding sentence in the same way the Federal Circuit did in Morgan Stanley. Id.
As to Plaintiff’s argument that Morgan Stanley relied upon figures and claim language
not present here, Defendant responds that the court in Morgan Stanley did not actually rely on
those figures and claim language; instead, the court simply held that the figures and claim
language further “highlighted” the appended requirement. Id. at 26. Defendants also contend that
dependent claim 25 of the ’530 Patent “does not merely require that descriptor be appended to
the compressed data block. Rather, claim 25 requires that a descriptor be appended to both ‘the
first and second compressed data blocks in the compressed data stream,’ adding a further
limitation to the independent claim.” Id. (emphasis in original). Essentially, Defendants contend

28

that independent claim 24 requires the descriptor to be appended, and dependent claim 25 adds
the limitation that it be appended to both the first and second data blocks. Doc. No. 317 at 26.
Claim 1 of the ‘530 patent recites in part: “A system comprising: a memory device; and a
data accelerator, . . . wherein a first data descriptor is stored on said memory device indicative of
said first compression technique, and said first descriptor is utilized to decompress the portion of
said compressed data stream associated with said first data block.” Claims 2 and 3 state “said
data accelerator stores said first descriptor to said memory device” and “said data accelerator
retrieves said first descriptor and said compressed data stream from said memory device,”
respectively. Additionally, independent Claim 24 recites, in relevant part: “A system comprising:
a memory device; and a data accelerator, wherein . . . a first data descriptor is stored on said
memory device indicative of said first compression technique, and said first descriptor is utilized
to decompress the portion of said compressed data stream associated with said first data block.”
Finally, dependent claim 25 recites “[t]he system of claim 1, wherein the data accelerator is
configured to append a type descriptor to the first and second compressed data blocks in the
compressed data stream, and wherein the type descriptor includes values corresponding to a
plurality of encoding techniques that were applied to the compressed data stream.” Further,
similar to the patents at issue in Morgan Stanley, the ’908 Patent claims do not mention
appendage.
Prior to the definition of “descriptor” Plaintiff cites in support of its proposal, the
specification states “[a] description module 38, operatively coupled to the compression ratio
module 35, appends a corresponding compression type descriptor to each encoded data block so
as to indicate the type of compression format of the encoded data block.” ’530 Patent at 12:33–
38. See also ’908 Patent at 59–64. Later, the specifications state “the original unencoded input

29

data block is selected for output and a null data compression type descriptor is appended
thereto.” ’530 Patent at 12:51–53; ’908 Patent at 13:10–12. The specification also states “the
data compression type descriptor identifies the corresponding encoding technique applied to the
encoded data block, not necessarily the specific encoder.” ’530 Patent at 12:43–46; ’908 Patent
at 13:2–5.
In Morgan Stanley, the Southern District of New York evaluated three patents to
determine whether the “appended” language should be included in the construction of
“Descriptor with the Encoded Data which Identifies, Descriptors Indicate, Descriptor Indicates”:
U.S. Patent No. 7,714,747, 7,417,568, and 7,777,657. Realtime Data, LLC v. Morgan Stanley,
et al., 875 F. Supp. 2d 276, 295–96 (S.D.N.Y. June 22, 2012). The primary issue before the court
in Morgan Stanley was “whether that descriptor must be physically attached or appended to the
data, or could be associated with the data in some other fashion.” Id. at 295. The court there
construed the term to mean “recognizable data that is appended to the encoded data for
specifying.” Id. In support, the court discussed “multiple references in the claims themselves in
which the descriptor [was] indicated as being ‘with’ or ‘appended to’ the data,” as well as several
flow charts in the ’747 Patent that supported the appendage step. Id. The court stated, “[t]here is
no support in the specification or claims for the descriptor to be completely detached from the
data block.” Id.at 296. The Federal Circuit affirmed with opinion. Morgan Stanley Affirmance,
slip op. at 18–19. None of the patents at issue in Morgan Stanley are currently before the Court,
but although Morgan Stanley involved different patents, the claim language at issue is similar,

30

and Morgan Stanley relied upon the same disclosure that is at issue here in the patents-in-suit, as
quoted above. See id.8
Notably however, the Federal Circuit found that the claims of the patents at issue in
Morgan Stanley recited limitations that implied that the descriptor must be attached to the data
packet. For example, the Federal Circuit emphasized claim language that required extracting a
descriptor from an encoded data packet. Morgan Stanley Affirmance, slip op. at 19 (discussing
’747 Patent at Claim 1). The other claims at issue in Morgan Stanley contain similar limitations.
See ’568 Patent at Claim 1 (“providing a descriptor with the encoded data”); see also ’747 Patent
at Claims 8 (“receives a data packet from the data stream having one or more descriptors” and
“analyze the data packet to identify a descriptor”), 14 (“providing a descriptor for the
compressed data packet in the data stream”), and 19 (“descriptor comprising one or more values
in the compressed data packet in the data stream”); ’651 Patent at Claims 1 (“receiving an
encoded message in a data packet of the financial data stream having a plurality of data fields
associated with the encoded message and one or more descriptors”), 13 (“outputs the encoded
data packet with a descriptor”), 22 (similar), 29 (similar), 43 (similar), 91 (“receiving an encoded
data packet from the financial data stream having one or more descriptors”) & 108 (similar).
Also, as discussed above, dependent Claim 25 of the ’530 Patent includes an appendage
limitation. As such, a claim differentiation issue that was not present in Morgan Stanley has been
presented to the Court in this case. Although Defendants argue that Claim 25 recites additional
limitations, it is the only claim here discussing appendage. The Court does not assume that the
independent claims include appendage here because “limitations stated in dependent claims are
not to be read into the independent claim from which they depend.” Curtiss-Wright Flow Control
8

See Nazomi Commc’ns, Inc. v. Nokia Corp., No. C-10-04686 RMW, 2013 WL 3146796, at *6 (N.D. Cal. June 18,
2013) (Whyte, J.) (“Collateral estoppel can apply to common issues in actions involving different but related
patents.”), aff’d sub nom. Nazomi Commc’ns, Inc. v. Microsoft Mobile Oy, 597 F. App’x 1075 (Fed. Cir. 2014).

31

Corp., 438 F.3d at 1380 (quoting Nazomi Commc'ns, Inc. v. Arm Holdings, PLC., 403 F.3d 1364,
1370 (Fed. Cir. 2005). Accordingly, the Court rejects Defendants’ proposed construction.
The Court also rejects Plaintiff’s proposed construction. In MetroPCS, the parties agreed
upon the portion of the term that the Court construed, but here they have not. In particular, the
parties have not agreed upon the meaning of “token.” The only portion of the term the parties
have agreed upon is “recognizable data,” but that phrase does not add anything of substance to
this term, and therefore the Court declines to include it in the construction. Additionally, both
parties are attempting to use the term “descriptor” to define “descriptor,” which offers no
guidance, does not define the term, and only adds additional confusion.
Accordingly, having resolved the parties’ dispute, the Court finds that the term
“descriptor” needs no construction. Although both sides have proposed the phrase “recognizable
data,” that phrase is not adopted because it would not aid the finder of fact.
V. “analyzing data structures or file substructures associated with the plurality of data
blocks / analyze data structures or file substructures associated with the plurality of data
blocks” (’513 Patent, Claims 11 & 19)
Claim Term
analyzing data
structures or file
substructures
associated with the
plurality of data
blocks / analyze data
structures or file
substructures
associated with the
plurality of data
blocks (’513 Patent,
Claims 11 & 19)

Plaintiffs’ Proposal
Directly [examining / examine]
data structures or file
substructures associated with the
plurality of data blocks

Defendants’ Proposal
Directly examining the content of
the data [structures or file
substructures] to be compressed to
determine the data type of that data
.

This disputed term presents essentially the same issues as the “recognition of any
characteristic, attribute, or parameter that is indicative of an appropriate content dependent
32

algorithm” term addressed above. Defendants’ proposal also indicates that Defendants believe
that a data item can have only one data type. Plaintiff argues that “‘a plurality of data blocks’
could potentially include multiple files and multiple ‘data types.’” Doc. No. 305 at 15 (citing
’512 Patent at 6:56–59). The specification states “[i]t is to be understood that the system
processes the input data stream in data blocks that may range in size from individual bits through
complete files or collections of multiple files.” ’512 Patent at 6:56–59.
For the same reasons as discussed above, and because the claim language and
specification do not support Defendants’ assertion that a particular data item can have only one
data type, the Court rejects the portion of Defendants’ proposal that reads “determine the data
type.” No further construction is necessary, but the Court adopts the parties’ common proposal
that “analyzing” and “analyze” mean “directly examining” and “directly examine,” respectively.
VI. “dictionary” (’812 Patent, Claims 1, 4, 8, 14, 17, 21, & 28)
Claim Term
dictionary9 (’812
Patent, Claims 1, 4,
8, 14, 17, 21, & 28)

Plaintiffs’ Proposal
No construction necessary.
Alternatively:
A data structure comprising a
plurality of code words, wherein
each code word in the data
structure is associated with a
unique data block string

Defendants’ Proposal
A set of indexes (dictionary
indexes), each of which is mapped
to a corresponding data block string
(“code word”) or a decoder signal
(“control code word”)

Plaintiff first argues that this term should be construed according to its ordinary meaning.
Doc. No. 305 at 29. Alternatively, Plaintiff contends that “dictionary” should be construed
according to Claim 1 of the ’812 Patent, which states that the dictionary “compris[es] a plurality
of code words, wherein each code word in the dictionary is associated with a unique data block
string.” Id. Plaintiff contends that Defendants’ proposal “is inconsistent with the claim language
9

Oracle does not join this portion of Defendants’ brief. Doc. No. 317 at 28.

33

and the specification” because it “equates a ‘code word’ with a ‘data block string’” and “equates
a ‘control code word’ with a ‘decoder signal.’” Id. at 30 (emphasis omitted). Essentially, Plaintiff
argues that Defendants’ proposal is confusing and is not supported by the intrinsic record.
Plaintiff contends that Defendants have cited to preferred embodiments in support of their
construction, but Plaintiff urges that importing those limitations into the claims would be
improper. Doc. No. 331 at 10 (citing JVW Enters. Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005)).
Additionally, Plaintiff argues that because dependent Claims 7 and 20 recite “control code
word,” that limitation cannot be imported into the independent claims. Doc. No. 331 at 10. At the
hearing, Plaintiff also asserted that because the word “decoder signal” does not appear in the
specification, it would be inappropriate for the Court to include it in the construction.
On the other hand, Defendants argue that “dictionary” has a special meaning here and “is
not the everyday dictionary known to jurors.” Doc. No. 317 at 28. Defendants urge that
“dictionary” includes “both ‘code words’ and ‘control code words’ [and the patent] gives no
example of a dictionary without both, and the claimed ‘invention’ could not operate without
both.” Id. at 29. Additionally, Defendants argue that their construction does not equate a code
word with a data block string or a control code word with a decoder signal; instead, a code word
is mapped to a data block string, and a control code word is mapped to signals of the decoder.
Id.at 30. At the hearing, Defendants also argued that dependent Claim 20 requires specific
control code words, not control code words generally, which would differentiate the limitation in
that dependent claim from the limitation of control code words contained in the independent
claim.
Defendants’ proposed construction, together with the arguments at the hearing, are a bit
unclear, but it appears that Defendants are contending “dictionary” means “a set of indexes

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(dictionary indexes), at least one of which is mapped to a corresponding code word and at least
one of which is mapped to a control code word.” At the hearing, Defendants clarified that the set
of indexes must include both at least one code word and at least one control code word.
The Court disagrees.
Because the term “dictionary” is used here in a manner that differs from its usage in
ordinary parlance, construction is appropriate to assist the finder of fact. The asserted
independent claims shed light on the correct construction of this term. The claims state, in
relevant part, “maintaining a dictionary comprising a plurality of code words, wherein each
code word in the dictionary is associated with a unique data block string; . . . searching for a
code word in the dictionary having a unique data block string associated therewith that matches
the built data block string . . . .” ’812 Patent at Claims 1 & 14 (emphasis added). Dependent
Claims 8 and 21 state “each code word in the dictionary comprises a dictionary index”, and
dependent Claims 7 and 20 state “the code words in the dictionary further comprise[ ] at least
one control code word representing one of dictionary initialization, a run-length encoded
sequence, an end of the input data, and a combination thereof.” ’812 Patent at Claims 7, 8, 20, &
21. Despite Defendants’ argument that dependent Claims 7 and 20 add additional limitations in
addition to control code words, the fact that these dependent claims include control code
words—a limitation not found in the independent claims—is an indication that the limitations
should not be imported into the independent claims.10
Additionally, Defendants argue the claimed invention cannot operate without code words
and control code words, but Defendants have not established any such requirement in the claims
at issue. The specification states “[t]he code word dictionary 15 comprises a plurality of
10

The recital in independent Claim 28 of the ’812 Patent that the dictionary includes “control code words” is not a
limitation upon the term “dictionary” generally but rather is merely an additional limitation in that particular claim.
See ’812 Patent at Claim 28.

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dictionary indices D[i], wherein each index in the dictionary 15 is mapped . . . to either a
predefined control code or a different code word corresponding to a character (byte) string.” ’812
Patent at 5:61–6:3. This portion of the specification does not indicate that a control code word is
required. The specification further states “[i]n another aspect of the present inventions, the
dictionary further comprises a plurality of control code words, wherein a control code word is
designated to represent a dictionary initialization, a run-length encoded sequence, and the end of
the input data (or completion of the encoding process). These control code words are used in the
decoding process to re-create the input data.” ’812 Patent at 3:51–57 (emphasis added). While
this portion of the specification speaks to control code words used for decoding, it is clear that
this is just one embodiment of the invention. Also, whereas dependent claims 7 and 20 recite
control code words, independent Claims 1 and 14 do not. Defendants’ proposal would
improperly import limitations from a particular disclosed embodiment and from dependent
claims. JVW Enters., 424 F.3d at 1335; Curtiss-Wright Flow Control Corp., 438 F.3d at 1380.
Further, although Defendants contend differently, their proposed construction would at
least on its face construe “dictionary” such that “data block string” is synonymous with “code
word” and such that “decoder signal” is synonymous with “control code word.” The Court finds
such construction inappropriate given the patent claims and specification discussed above.
Defendants have not demonstrated that “data block string” and “code word” are synonymous.
To the contrary, Claim 1 of the ’812 Patent recites that “each code word in the dictionary is
associated with a unique data block string.” ’812 Patent at Claims 1 & 14; See also ’812 Patent
at 5:66-6:3 (“code word corresponding to a character (byte) string”). Accordingly, the Court
rejects Defendants’ proposed construction.

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As such, the Court construes “dictionary” as “a data structure comprising a plurality of
code words, wherein each code word in the data structure is associated with a unique data block
string.”
VII. “circuit” (’513 Patent, Claims 15 & 19)
Claim Term
circuit (’513 Patent,
Claims 15 & 19)

Plaintiffs’ Proposal
No construction necessary.

Defendants’ Proposal
A dedicated integrated circuit, as
opposed to a general purpose
computer (or software running on a
general purpose computer)

Plaintiff contends this term does not require construction because one of ordinary skill in
the art “would be familiar with, and apply the plain and ordinary meaning” to the term. Doc. No.
305 at 19. Plaintiff asserts that Defendants’ proposal is unhelpful, as it “merely take[s] the claim
term in dispute [ ] and add[s] 18 other words around it.” Id. Plaintiff further argues that “the
intrinsic record provides no disclaimer or disavowal for Defendants’ lengthy—and improper—
rewriting” and instead “the specification expressly teaches that circuits performing the
compression algorithms on circuits do not require the limitations Defendants seek to import.” Id.
(citing Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
(emphasis omitted). Defendants respond that their proposal is consistent with the only instance
in which “circuit” appears in the specification, and “claim 15 requires four different circuits” and
“does not mention encoders.” Doc. No. 317 at 18–19. At the hearing, Defendants also argued
that it is also permissible to exclude embodiments.11
Independent Claim 15 recites, in relevant part:
15. A device for compressing data comprising:

11

To support this assertion, Defendants’ cited PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815
F.3d 747, 755 (Fed. Cir. 2016) and Helmsderfer v. Bobrick Washroom Equp., Inc., 527 F.3d 1379, 1383 (Fed. Cir.
2008).

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a first circuit configured to analyze a plurality of data blocks to
recognize when an appropriate content independent
compression algorithm is to be applied to the plurality of
data blocks;
a second circuit configured to apply the appropriate content
independent data compression algorithm to a portion of the
plurality of data blocks to provide a compressed data
portion;
a third circuit configured to analyze a data block from another
portion of the plurality of data blocks for recognition of any
characteristic, attribute, or parameter that is indicative of an
appropriate content dependent algorithm to apply to the
data block; and
a fourth circuit configured to apply the appropriate content
dependent data compression algorithm to the data block to
provide a compressed data block when the any
characteristic, attribute, or parameter is identified.

Neither independent Claim 15 nor dependent Claim 19 requires a dedicated hardware for the
operation of the four circuits described therein.
The specification also does not suggest that a “circuit” requires dedicated hardware. The
specification discloses that encoders may operate on “dedicated hardware” or on a “single central
processor.” ’513 Patent at 17:3–10. Instead, the specification states “one or more algorithms
may be implemented in dedicated hardware such as an MPEG4 or MP3 encoding integrated
circuit.” ’513 Patent at 17:21–24 (emphasis added). This portion of the specification merely
recites an example of a type of “circuit” and clarifies that dedicated hardware is permissive but is
also merely a description of a preferred embodiment. The specification also states “[t]his process
is intended to eliminate the complexity and additional processing overhead associated with
multiplexing concurrent encoding techniques on a single central processor and/or dedicated
hardware, set of central processors and/or dedicated hardware, or any achievable combination.”
’513 Patent at 17:12–17.

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Defendants’ proposal would require a separate hardware for each circuit discussed in
Claim 15, but contrary to Defendants’ assertions, the claims and specification do not require a
separate hardware for each of the four circuits. Defendants are attempting to import limitations
disclosed in embodiments into the claims. Accordingly, the Court rejects Defendants’ proposed
construction and finds that no further construction is necessary.
Finally, the parties submit the following agreed constructions:
Term
memory device (’530 Patent, Claims 1–5,
9–12, 24; ’908 Patent, Claims 1, 2, 4–6,
21, 22, 25)
default encoder (’992 Patent, Claims 48,
49)
data type / data types (’992 Patent, Claims
48, 49)
analyzing data within the data block to
identify a first data type of the data within
the data block (’992 Patent, Claims 48,
49)
compressing / compressed / compression
(passim)
receiving an input data block /
receiving a data block /
receiving said compressed data block /
in received form /
receiving the plurality of data blocks /
receiving a first and a second data block
over a communications channel /
data block is received uncompressed (’812
Patent, Claims 2, 15; ’992 Patent, Claims
48, 49; ’530 Patent, Claims 1, 24; ’513
Patent, Claims 2, 16; ’908 Patent, Claim
25)
data stream is received (’530 Patent,
Claims 1, 24)
excludes analyzing based only on a
descriptor (’513 Patent, Claims 1, 15; ’992
Patent, Claims 48, 49)
encoder / a first encoder (’992 Patent,

Agreed Construction
An identified memory device to which data is
directed for recording and later retrieval
An encoder used automatically in the absence of a
designated alternative
Categorization of the data as one of ASCII, image
data, multimedia data, signed and unsigned
integers, pointers, or other data type
Directly examining the content of the data to be
compressed to determine the data type of that data

[Representing / represented / representation] of data
with fewer bits
Receiving from an external source one or more data
blocks

One or more blocks transmitted in sequence from
an external source whose characteristics are not
controlled by the data encoder or decoder
The analysis cannot be based solely on a descriptor

Hardware and/or software that performs data
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Claims 48, 49; ’530 Patent, Claims 15, 18;
’812 Patent, Claim 28)
data (passim)
run-length sequence of data blocks (’812
Patent, Claims 1–3, 14–16, 28)
Claims 48 and 49 of the ‘992 patent
data blocks / data block (passim)

compression
A representation of information
Plural consecutive similar data blocks
No construction necessary
A single unit of data, which may range in size from
individual bits through complete files or collection
of multiple files

The Court, having reviewed the parties’ agreed constructions, as well as the asserted
claims, specifications, and prosecution history, finds the parties’ agreed constructions
appropriate and construes the terms as set forth above.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.

So ORDERED and SIGNED this 28th day of July, 2016.

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