Cypress Lake Software, Inc. v. ZTE (USA) Inc.
Filing
123
MEMORANDUM OPINION AND ORDER ON CLAIM CONSTRUCTION. Signed by District Judge Robert W. Schroeder, III on 08/23/18. (mll, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
CYPRESS LAKE SOFTWARE, INC.,
Plaintiff,
v.
ZTE (USA) INC.,
Defendant.
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Case No. 6:17-CV-00300-RWS
(LEAD)
MEMORANDUM OPINION AND ORDER ON CLAIM CONSTRUCTION
On August 8, 2018, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent Nos. 8,661,361 (“the ’361 Patent”), 8,781,299 (“the
’299 Patent”), 8,983,264 (“the ’264 Patent”), 9,871,558 (“the ’558 Patent”), and 9,423,954 (“the
’954 Patent”). The Court has considered the arguments made by the parties at the hearing and in
their claim construction briefs. Docket Nos. 93, 98, & 121.1 The Court has also considered the
intrinsic evidence and made subsidiary factual findings about the extrinsic evidence. See Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135
S. Ct. 831, 841 (2015). The Court issues this Memorandum and Order on Claim Construction in
light of these considerations.
Citations to the parties’ filings are to the filing’s number in the docket (Docket No.) and pin
cites are to the page numbers assigned through ECF.
1
TABLE OF CONTENTS
I.
BACKGROUND ................................................................................................................ 3
II.
APPLICABLE LAW .......................................................................................................... 6
III.
LEVEL OF ORDINARY SKILL IN THE ART .............................................................. 11
IV.
CONSTRUCTION OF AGREED TERMS ...................................................................... 12
V.
CONSTRUCTION OF DISPUTED TERMS ................................................................... 13
A.
B.
The Disputed “Component” Terms In The ’361 Patent ...................................... 22
C.
The Disputed “Code For” Terms In The ’299 And ’264 Patent ......................... 33
D.
“allowed” ............................................................................................................. 43
E.
“application region” ............................................................................................ 47
F.
“a second application region” ............................................................................. 50
G.
“application”........................................................................................................ 53
H.
“operating application(s)” ................................................................................... 56
I.
“detection of a first (second/third) user input” .................................................... 58
J.
VI.
The Disputed “Code For” Terms In The ’361 Patent.......................................... 13
The “Instructions To” Phrase In The ’361 Patent ............................................... 61
CONCLUSION ................................................................................................................. 67
Page 2 of 67
I.
BACKGROUND
A. The ’361 Patent
The ’361 Patent is titled “Methods, Systems, and Computer Program Products for
Navigating Between Visual Components.” The ’361 Patent generally relates to navigating
between different applications whose windows are simultaneously displayed on a computer
screen. ’361 Patent at 1:38–51. The specification states that having multiple applications running
and displayed at the same time creates a cluttered screen of overlapping windows. Id. at 1:7–26.
Thus, when multiple applications are simultaneously displayed in an overlapping manner, finding
the desired application “may require a user to repeat a similar and/or same set of movements over
and over.” Id. According to the specification, the disclosed embodiments provide a solution to the
need “for navigating between visual components.” Id.
Claim 1 of the ’361 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
17. A system for navigating between visual components, the
system comprising:
a processor that executes an instruction included in at least one of
a presentation space monitor component, an application
navigator component, a navigation element handler
component, and a navigation director component during
operation of the system;
the presentation space monitor component that during operation
of the system detects, in a first application region of a
presentation space of a display device, a first visual
component of a first operating application in a plurality of
operating applications;
the application navigator component that during operation of the
system presents a first navigation control, in a first
navigation region determined based on the first application
region, for navigating to a second visual component, of a
second application in the plurality, in a second application
region in the presentation space, wherein the first
navigation region is determined based on a location of at
least one of the first visual component, a parent visual
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component of the first visual component, and a child visual
component of the first visual component;
the navigation element handler component that during operation
of the system detects a user input corresponding to the first
navigation control; and
the navigation director component that during operation of the
system sends, in response to detecting the user input,
navigation information to navigate to the second visual
component.
B. The ’299, ’264, And ’558 Patents
The ’299 Patent, the ’264 Patent, and the ’558 Patent are all titled “Methods, Systems, and
Computer Program Products for Coordinating Playing of Media Streams.” These patents share a
common specification. The specification states that the disclosed embodiments address a problem
that occurs when multiple media streams play simultaneously, thereby creating “interference” and
“lead[ing] to an unpleasant listening experience.” ’299 Patent at 1:20–43. The specification adds
that a need exists for coordinating playing of media streams. Id. To achieve this coordination, the
patents use “presentation focus,” which indicates that a first media player is allowed to play a first
media stream, and a second media player is not allowed to play a second media stream. See e.g.,
id. at 12:60–13:8.
Claim 1 of the ’299 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A computer program product embodied on a non-transitory
computer readable medium, comprising:
code for working in association with a first presentation device
having a touchscreen that is capable of providing access to
a plurality of applications including a first media player
and a second media player in an execution environment, the
first presentation device capable of communication with a
second presentation device including a display via a
wireless local area network on which the first presentation
device resides, where execution environment presentation
focus information is accessible for identifying whether at
least one of the first presentation device or the second
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presentation device is to be utilized for presentation in
connection with the applications;
code for detecting access to the first media player to play a first
media stream that includes video;
code for indicating, if the first presentation device is to be utilized
for presentation based on the execution environment
presentation focus information, that the first media player
is allowed to play the first media stream via the first
presentation device;
code for indicating, if the second presentation device is to be
utilized for presentation based on the execution
environment presentation focus information, that the first
media player is allowed to play the first media stream via
the second presentation device;
code for indicating, if both the first presentation device and the
second presentation device are to be utilized for
presentation based on the execution environment
presentation focus information, that the first media player
is allowed to play the first media stream via both the first
presentation device and the second presentation device;
wherein the computer program product is operable such that a
change in presentation focus is capable of being based on
at least one of a releasing of a first presentation focus in
connection with the first media player, a detected user input
indication for giving the second media player second
presentation focus, a change in input focus, a change in an
attribute of a user interface element, a count of media
streams being played, a ranking of media streams being
played, a transparency level of at least one of the user
interface element, or another user interface element sharing
a region of a display of the first presentation device.
C. The ’954 Patent
The ’954 Patent is titled “Graphical User Interface Methods, Systems, and Computer
Program Products.” The ’954 Patent generally relates to the integration of applications that run
simultaneously on a computer. ’954 Patent at 1:20–37. Claim 14 is the only asserted claim and
recites the following elements (disputed term in italics):
14. An apparatus, comprising:
at least one processor configured for coupling with memory and
a touchscreen, and further configured for:
Page 5 of 67
storage of a plurality of applications including a first application,
a second application, and a third application, utilizing the
memory, the applications including a first program
component and a second program component;
detection of a first user input;
in response to the first user input, presentation of, utilizing the
touchscreen, a first window associated with the first
program component including at least one user interface
element;
detection of a second user input in connection with the at least
one user interface element of the first window;
in response to the second user input in connection with the at least
one user interface element of the first window, creation of
a second window associated with the second program
component and presentation thereof, utilizing the
touchscreen, adjacent to and not overlapping with respect
to the first window, for presenting, in the second window,
data associated with the at least one user interface element
of the first window;
detection of a third user input; and
in response to the third user input, change, utilizing the
touchscreen, the presentation of the first window and the
second window, such that a first size of the first window
and a second size of the second window are both changed,
and the second window remains adjacent to and not
overlapping with respect to the first window.
II.
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
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861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry. . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
415 F.3d at 1314. 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)). “[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). But, “ ‘[a]lthough the specification may aid the court
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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 MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “ ‘less significant than the intrinsic
record in determining the legally operative meaning of claim language.’ ” Phillips, 415 F.3d at
1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
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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. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, 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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
B.
35 U.S.C. § 112(6) (pre-AIA) / § 112(f) (AIA)2
A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
. . . for performing a specified function” and that an act may be claimed as a “step for performing
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms,
and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Because the application resulting in the ’361 Patent w a s filed before September 16, 2012, the
effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of §
112.
2
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Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context of
the entire specification, to denote sufficiently definite structure or acts for performing the function.
See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§
112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of
ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
function . . . even if the claim uses the term ‘means.’”) (quotation marks and citation omitted).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he 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.” Id. The focus of the “corresponding structure”
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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. The corresponding structure “must include all structure that actually performs the recited
function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
Cir. 2005). However, § 112, ¶ 6 does not permit “incorporation of structure from the written
description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
For § 112, ¶ 6 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).
III.
LEVEL OF ORDINARY SKILL IN THE ART
It is well established that patents are interpreted from the perspective of one of ordinary
skill in the art. See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in the art in question at
the time of the invention, i.e., as of the effective filing date of the patent application.”). The Federal
Circuit has advised that the “[f]actors that may be considered in determining the level of skill in
the art include: (1) the educational level of the inventors; (2) the type of problems encountered in
the art; (3) prior art solutions to those problems; (4) the rapidity with which innovations are made;
(5) sophistication of the technology; and (6) education level of active workers in the field.” Envtl
Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696 (Fed. Cir. 1983). “These factors
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are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.”
Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
Plaintiff contends that “[a] person of ordinary skill in the art would have a Bachelor of
Science degree in computer science with 2 years of programming experience, or the equivalent
thereof.” Docket No. 93 at 5. Defendant’s expert, Dr. Dan Schonfeld, opines that a person of
ordinary skill in the art “would have (a) at least at least a Bachelor’s degree in Electrical
Engineering, Computer Engineering, Computer Science, or equivalent thereof and (b) at least two
years of work experience relating to multimedia streaming and user interfaces.” Docket No. 1021 at ¶15).
Having considered the parties’ proposals, and the factors that may be considered in
determining the level of skill in the art, the Court finds that a person of ordinary skill in the art
would have a Bachelor’s degree in Electrical Engineering, Computer Engineering, Computer
Science, or equivalent thereof, and at least two years of programming experience.
IV.
CONSTRUCTION OF AGREED TERMS
The parties agreed to the construction of the following terms/phrases:
Claim Term/Phrase
“presentation focus information”
(’299 Patent claims 1, 17, and 28; ’264 Patent
claim 61; ’558 Patent claim 14)
“presentation focus”
(’299 Patent claims 1, 17, and 28; ’264 Patent
claims 61, 63, and 67; ’558 Patent claim 14)
Agreed Construction
“data that identifies one or more media
players and whether the media players
have presentation focus”
“an attribute associated with a media
player, directly and/or indirectly, indicating
whether the media player is allowed to
access one or more presentation devices for
playing one or more corresponding media
streams on the presentation devices; an
attribute for restricting and coordinating
access to an output device by one or more
applications”
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“input focus”
(’299 Patent claims 1, 17, and 28; ’264 Patent
claim 61; ’558 Patent claim 14)
“navigation control”
(’361 Patent claims 17, 50, 79, 97-99, 158, 159,
163)
“an attribute of a user interface element
indicating whether input from one or more
particular input devices is directed to the
element”
“a user interface element for navigating
between and/or among user interface
elements of respective operating
applications”
Docket No. 111-1 at 26, 27, and 29. In view of the parties’ agreement on the construction of the
identified terms, the Court ADOPTS the parties’ agreed constructions.
V.
CONSTRUCTION OF DISPUTED TERMS
The parties’ dispute focuses on the meaning and scope of thirteen terms/phrases in the
Asserted Patents.
A. The Disputed “Code For” Terms In The ’361 Patent
Disputed Term
“code for detecting the
user input corresponding
to the first navigation
control”
Plaintiff’s Proposal
Not subject to § 112, ¶ 6.
(plain and ordinary meaning)
The entire specification and
patents incorporated by reference.
Defendant’s Proposal
Subject to § 112, ¶ 6.
Function: “detecting user
input corresponding to the
first navigation control”
Structure: none
“code for sending, in
response to detecting the
user input, navigation
information to navigate to
the second visual
component”
Not subject to § 112, ¶ 6.
(plain and ordinary meaning)
The entire specification and
patents incorporated by reference.
Subject to § 112, ¶ 6.
Function: “sending, in
response to detecting the user
input, navigation information
to navigate to the second
visual component”
Structure: none
1. The Parties’ Positions
The parties dispute whether the phrases “code for detecting . . .” and “code for sending . .
.” are subject to § 112, ¶ 6. Plaintiff argues that the Court should find that § 112, ¶ 6 is not
applicable. Docket No. 93 at 31. Defendant responds that both limitations are “drafted in the
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same format as a traditional means-plus-function limitation” where the patentee “merely
replace[d] the term ‘means’ ” with the term “code.” Docket No. 98 at 9 (citing Williamson, 792
F.3d at 1350). Defendant argues that the words “code for” do not convey any definite structure.
Docket No. 98 at 10 (citing Docket No. 102-1 at ¶¶ 22-24, 32-33; Docket No. 98-3 at 6; Docket
No. 98-4 at 4; Docket No. 98-5 at 4). Defendant further argues that the rest of the claim language
also fails to provide any structural meaning in that it fails to distinguish “code for” from generic
software. Docket No. 98 at 10 (citing Docket No. 102-1 at ¶¶ 24, 33). Defendant also contends
that the specification of the ’361 Patent equates “code for” and “means for.” Docket No. 98 at 1011 (citing ’361 Patent at 14:14–7, 15:49–52). According to Defendant, the term “code for” invokes
Section § 112, ¶ 6. Docket No. 98 at 11.
Defendant next argues that the ’361 Patent does not disclose any algorithm or structure to
perform the recited functions. Id.at 12 (citing Docket No. 102-1 at ¶¶ 26, 28-31, 35, 37-38; ’361
Patent at 1:47–51, 14:43–46, 14:59–62, Figure 2). Defendant contends that the specification never
associates the recited functions with any structure that would be understood by a POSITA. Docket
No. 98 at 12 (citing Docket No. 102-1 at ¶¶ 28-31, 37-38). According to Defendant, claims 50,
79, 97-99, 158-159, and 163 are invalid as indefinite because the specification provides “just a
black box . . . without any mention of a corresponding structure.” Docket No. 98 at 13 (citing
ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012)).
Regarding the phrase “code for detecting,” Plaintiff replies that Defendant’s expert
“ignores the ’299 patent at least at Col. 6:21-38 which provides adequate structure in prose when
it references Figure 2.” Docket No. 121 at 14 (citing ’299 Patent at 6:21–38). Plaintiff also argues
that the patent specification of the ’299 Patent provides additional examples in Figure 3. Id.
According to Plaintiff, the Court should find that § 112, ¶ 6 is not applicable. Docket No. 121 at
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15.
Regarding the phrase “code for sending,” Plaintiff replies that Defendant’s expert skips the
step of starting with the context of the claim language. Id. Plaintiff further argues that the
specification discloses structure. Id. (’361 at 15:52–16:5, Figure 2, 3, 4a-d). According to
Plaintiff, the Court should find that § 112, ¶ 6 is not applicable. Docket No. 121 at 15.
For the following reasons, the Court finds that the phrase “code for detecting the user
input corresponding to the first navigation control” is governed by 35 U.S.C. § 112, ¶ 6, and
is indefinite. The Court further finds that the phrase “code for sending, in response to detecting
the user input, navigation information to navigate to the second visual component” is
governed by 35 U.S.C. § 112, ¶ 6, and is not indefinite.
2. Analysis
The phrase “code for detecting the user input corresponding to the first navigation control”
appears in asserted claims 17, 50, 79, 97-99, 158, 159, and 163 of the ’361 Patent. The Court finds
that the phrase is used consistently in the claims and is intended to have the same general meaning
in each claim. The phrase “code for sending, in response to detecting the user input, navigation
information to navigate to the second visual component” appears in asserted claims 17, 50, 79, 9799, 158, 159, and 163 of the ’361 Patent. The Court finds that the phrase is used consistently in
the claims and is intended to have the same general meaning in each claim. For the following
reasons, the Court finds that the phrases are subject to § 112, ¶ 6.
a. Determining Whether the Disputed “Code For” Terms are MeansPlus-function Terms
It is well settled that [a] claim limitation that actually uses the word ‘means’ invokes a
rebuttable presumption that § 112, [¶] 6 applies.” Apex Inc. v. Raritan Comput., Inc., 325 F.3d
1364, 1371 (Fed. Cir. 2003) (quotation omitted). It is also equally understood that “a claim term
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that does not use ‘means’ will trigger the rebuttable presumption that § 112, [¶] 6 does not apply.”
Id. at 1371 (quotation omitted). The presumption against the application of § 112, ¶ 6 may be
overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for performing that
function.’ ” Williamson, 792 F.3d at 1348 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.
Cir. 2000)). “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. In
determining whether this presumption has been rebutted, the challenger must establish by a
preponderance of the evidence that the claims are to be governed by § 112, ¶ 6. See Apex Inc. v.
Raritan Comput. Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003).
Here, there is a rebuttable presumption that § 112, ¶ 6 does not apply because the claim
does not recite the word “means.” Therefore, the analysis proceeds in two steps. First, the Court
must determine whether the phrases are in means-plus-function form pursuant to 35 U.S.C. § 112,
¶ 6. See Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014). If the Court
determines that the phrase recites a means-plus-function limitation, then the Court proceeds to the
next step and attempts “to construe the disputed claim term by identifying the corresponding
structure, material, or acts described in the specification to which the term will be limited.” Id.
(internal quotation marks and citation omitted).
Starting with the first step, Defendant argues that the term “code for” does not convey any
definite structure to a POSITA that could be used to perform the function. This Court has noted
that in many instances, “code,” like “circuit” or “processor,” may connote sufficiently definite
structure and is not a “nonce” or “functional” word that is subject to the limitations of § 112, ¶ 6.
Glob. Equity Mgmt. (SA) Pty. Ltd. v. Expedia, Inc., 2016 U.S. Dist. LEXIS 177218, at *96-97
Page 16 of 67
(E.D. Tex. Dec. 22, 2016). In other words, whether recitation of a “code for” performing a function
is governed by § 112, ¶ 6 depends on whether the recited objectives and operation of the code
connote sufficiently definite structure. See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379
F.3d 1311, 1319-21 (Fed. Cir. 2004) (finding that “circuit [for performing a function]” was
sufficiently definite structure because the claim recited the “objectives and operations” of the
circuit.).
In the context of the intrinsic evidence, the Court agrees with Defendant that the term “code
for” does not connote sufficiently definite structure. The term “code for” is defined only by the
function that it performs. Specifically, “code for detecting the user input corresponding to the first
navigation,” or “code for sending . . . navigation information to navigate to the second visual
component.” The surrounding claim language also does not identify any specific structure of
“code for” to perform the recited function of “detecting the user input corresponding to the first
navigation control,” or “sending . . . navigation information to navigate to the second visual
component.” Docket No. 102-1 at ¶¶ 24, 33.
Moreover, the specification equates “code for” and “means for” by using the same
functional language as in the claims except that the specification recites “means for” performing
those functions, whereas the claims recite “code for” doing so. Specifically, the specification states
“a system for navigating between visual components includes means for detecting a user input
corresponding to the first navigation control.” ’361 Patent at 14:14–17 (emphasis added).
Likewise, the specification states “a system for navigating between visual components includes
means for sending, in response to detecting the user input, navigation information to navigate to
the second visual component.” Id. at 15:49–52 (emphasis added). Thus, a person of ordinary skill
in the art would understand that the ’361 Patent uses the terms “code for” and “means for” as
Page 17 of 67
synonyms. Docket No. 102-1 at ¶¶ 25, 34. Accordingly, Defendant has rebutted the presumption
that § 112, ¶ 6 does not apply to the disputed “code for” terms in the ’361 Patent.
Turning to Plaintiff’s general arguments relating to the application of § 112, ¶ 6, Plaintiff
first argues that reciting a “computer product embodied on a non-transitory computer readable
medium” in the claims’ preamble provides structure to perform functions associated with the “code
for” terms. Docket No. 93 at 9. As discussed above, the Court reviewed the disputed phrases in
the context of the claim language and intrinsic evidence and determines that Defendant has
rebutted the presumption that § 112, ¶ 6 does not apply.
Plaintiff next argues that the terms discussed above are not means-plus-function limitations
because they do not “mention [ ] the trigger term ‘means for.’ ” Docket No. 93 at 15. As discussed
above, the absence of the word “means” creates a rebuttable presumption, and Defendant has
overcome the presumption by proving that the “claim term fails to recite sufficiently definite
structure or else recites function without reciting sufficient structure for performing that function.”
Williamson, 792 F.3d at 1348-49.
Plaintiff also argues that the patentee clearly indicated that § 112, ¶ 6 should not apply.
Specifically, the patentee stated in the prosecution history that “it should be noted that no claims
are intended to be construed under 35 U.S.C. paragraph 6.” Docket No. 93 at 12-13. Whether a
claim limitation invokes § 112, ¶ 6 is a question of law. Under the controlling precedent, the Court
concludes that Defendant has rebutted the presumption that § 112, ¶ 6 does not apply. In other
words, a patentee cannot “opt-out” of the controlling precedent by stating that his “intent” is for it
not to apply.
Plaintiff also cites to a number of cases that were decided before the Federal Circuit’s en
banc Williamson holding that “a heightened burden [for applying Section 112(f)] is unjustified”
Page 18 of 67
and “abandon[ing] characterizing as ‘strong’ the presumption that a limitation lacking the word
‘means’ is not subject to § 112, para. 6.” Williamson, 792 F.3d at 1349. Contrary to Williamson,
Plaintiff argues that “[t]he Federal Circuit has made it clear that ‘the presumption flowing from
the absence of the term ‘means’ is a strong one that is not readily overcome.’ ” Docket No. 93 at
10 (citing Roy-G-Biv Corp. v. Funac Ltd., Case 2:07-CV-418-DF (J. Folsom) (E.D. Tex. 2007)
(citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)).
This is incorrect because the Federal Circuit has clarified that the very language quoted by Plaintiff
is “superseded case law.” Media Rights, 800 F.3d at 1373.
b. Construing the Terms that are Subject to § 112, ¶ 6.
“The first step in construing [a means-plus-function] limitation is a determination of the
function of the means-plus-function limitation.” Medtronic, 248 F.3d at 1311. The Court finds
that the recited function for the first term is “detecting the user input corresponding to the first
navigation control.” The Court finds that the recited function for the second term is “sending, in
response to detecting the user input, navigation information to navigate to the second visual
component.” Having determined the function, “the next step is to determine the corresponding
structure disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311.
When a limitation is a means-plus-function limitation, and the corresponding structure is
software, there must be an algorithm for the software or else the means-plus-function limitation
will be considered indefinite unless the function can be performed by a general purpose computer.
See Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (holding that the
corresponding disclosure for a computer-implemented means-plus-function claim is an algorithm).
An algorithm may be expressed “in any understandable terms including as a mathematical formula,
in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (quoting Finisar Corp. v. DirecTV Grp., Inc.,
Page 19 of 67
523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a stepby-step procedure for accomplishing a given result.” Id. at 1385 (quoting In re Freeman, 573 F.2d
1237, 1245-46 (CCPA 1978)).
Regarding the phrase “code for detecting,” the specification fails to disclose any structure
for performing the recited function. There is no algorithm described in any form for the function
of “detecting the user input corresponding to the first navigation control.”
Instead, the
specification merely provides functional language and does not contain any process for detecting
the user input.
Plaintiff does not identify any corresponding structure found in the specification of the
’361 Patent. In its opening brief, Plaintiff only references “its arguments above pertaining to
112(6) not being applicable.” Docket No. 93 at 31. The referenced arguments were for a different
phrase, and did not identify any corresponding structure in the ’361 Patent for this means-plusfunction term. In its reply brief, Plaintiff cites to the ’299 Patent. Docket No. 121 at 14. However,
the asserted claims appear in the ’361 Patent, not the ’299 Patent. Moreover, the “structure”
Plaintiff points to relates to the function of “detecting access to the first media player to play a first
media stream that includes video,” and not the function of “detecting the user input corresponding
to the first navigation control” recited in the claims of the ’361 Patent.
Plaintiff has not provided any support or reasoning for its proposal that the corresponding
structure for a means-plus-function term can be found in an unrelated patent and correspond to an
unrelated function. Contrary to Plaintiff’s proposal, the structure “must be clearly linked or
associated with the claimed function.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1219 (Fed. Cir. 2003). The ’299 Patent and the ’361 Patent do not share a common
specification, or share common elements. Thus, the structure linked to an unrelated function in an
Page 20 of 67
unrelated patent cannot serve as a proxy for the required corresponding structure. Accordingly,
Plaintiff has not identified any corresponding structure in the ’361 Patent for the function of
“detecting access to the first media player to play a first media stream that includes video.”
Moreover, the specification of the ’361 Patent does not disclose an algorithm or structure
to perform the recited functions. During the claim construction hearing, Plaintiff argued that there
are a number of figures in the ’361 Patent that provide examples of structure. As it relates to the
“code for detecting” term, these examples are generic black boxes devoid of any physical structure
or algorithm. See ’361 Patent at Figure 3 (“Navigation Element Handler 306”), Figure 4a
(“Navigation Element Handler 406a”), Figure 4b (“Navigation Element Handler 406b), Figure 4c
(“Navigation Element Handler 406c”), Figure 4d (“Navigation Element Handler 406d”).
Likewise, the “algorithm” disclosed in Figure 2 only repeats the functional language recited in the
claims. See ’361 Patent at Figure 2 (Box 206 - “Detect a user input corresponding to the first
navigation control”). “Merely restating the function in the specification is insufficient to provide
the required algorithm.” Cloud Farm Assocs. LP v. Volkswagen Grp., Inc., 674 F. App’x 1000,
1010-11 (Fed. Cir. 2017). Accordingly, “[t]here is no specific algorithm disclosed in prose, as a
mathematical formula, in flow charts, or otherwise” in the ’361 Patent for performing the functions
associated with the “code for detecting . . ..” Function Media, 708 F.3d at 1318. Thus, the “code
for detecting” phrase is indefinite for failure to disclose corresponding structure.
Regarding the phrase “code for sending . . . navigation information . . . ,” the specification
does disclose corresponding structure for performing the recited function. Specifically, the
specification states the following:
Sending the navigation information may include sending the navigation
information by invoking a function, a method, and/or a subroutine. Sending the
navigation information may include sending the navigation information by sending
a message via a network. The message may be sent asynchronously. The message,
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in another aspect, may be included in a request/response exchange. Sending the
navigation information may include sending the navigation information by sending
data via an inter-process communication (IPC) including, for example, a message
queue, a pipe, an interrupt, a semaphore, and/or a lock. Sending the navigation
information may include sending the navigation information via a shared data area.
’361 Patent at 15:60–16:5 (emphasis added). Defendant’s expert, Dr. Schonfeld, opines that these
are “additional functionality that may be included as part of the function.” Docket No. 102-1 at ¶
35. The Court disagrees and finds that the specification identifies these as one or more steps used
to perform the recited function of “sending navigation information to navigate to the second visual
component.” Finally, in reaching its conclusion, the Court has considered the extrinsic evidence
submitted by the parties and gives it its proper weight in light of the intrinsic evidence.
3. Court’s Construction
In light of the evidence, the Court finds that the phrase” “code for detecting the user
input corresponding to the first navigation control” is governed by 35 U.S.C. § 112, ¶ 6, and
is indefinite for failure to disclose corresponding structure.
In light of the evidence, the Court finds that the phrase “code for sending, in response to
detecting the user input, navigation information to navigate to the second visual component”
is governed by 35 U.S.C. § 112, ¶ 6, and construes the phrase as follows:
Function: Sending, in response to detecting the user input, navigation information to
navigate to the second visual component.
Corresponding Structure: A processor programmed to perform one or more of the
steps for sending navigation information disclosed in the ’361 Patent at 15:60–16:5.
B. The Disputed “Component” Terms In The ’361 Patent
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Disputed Term
Plaintiff’s Proposal
“navigation element
Not subject to § 112, ¶ 6.
handler component that … (plain and ordinary meaning)
detects a user input”
The entire specification and
patents incorporated by reference.
Defendant’s Proposal
Subject to § 112, ¶ 6.
Function: “detect a user
input”
Structure: none
“navigation director
component that … sends
… navigation
information”
Subject to § 112, ¶ 6.
Function: “send navigation
information”
Structure: none
Not subject to § 112, ¶ 6.
(plain and ordinary meaning)
The entire specification and
patents incorporated by reference.
1. The Parties’ Positions
The parties dispute whether the phrases “navigation element handler component . . .” and
“navigation director component . . .” are subject to § 112, ¶ 6. Regarding the phrase “navigation
element handler component,” Plaintiff argues that the claim language, including the preamble,
connotes sufficient structure such that a person of ordinary skill in the art understands the claim
language as written. Docket No. 93 at 26-27. Plaintiff further argues that the specification
supports its position that no construction is needed for this term. Id. at 27 (citing ’361 Patent at
14:17–19, Figures 3, 4a-d). According to Plaintiff, Defendant has not overcome the presumption
that this term should be construed as a mean-plus-function. Docket No. 93 at 27.
Regarding the phrase “navigation director component,” Plaintiff argues that claim 17
indicates that the phrase is part of a “system for navigating between visual components.” Docket
No. 93 at 28. Plaintiff further argues that the claim language goes on to explain the duties of the
“navigation director component.” Id. at 29. Plaintiff also contends that the specification of the
’361 Patent discusses the role of the navigation director component in text, figures, and diagrams.
Id. (citing ’361 Patent at 15:1–18:55, Figures 3, 4a-d). According to Plaintiff, Defendant has not
overcome the presumption that this term should be construed as a mean-plus-function. Docket
No. 93 at 31.
Regarding the phrase “navigation element handler component,” Defendant responds that
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the limitations is drafted “in a format as a traditional means-plus-function limitations.” Docket
No. 98 at 13 (citing Williamson, 792 F.3d at 1350). Defendant argues that the limitation replaces
the term “means” with the term “component” and then recites a function performed by the
“navigation element handler component.” Id. According to Defendant, the claim language
indicates that the “navigation element handler component” performs a function but does not recite
any structure for performing that function. Id. at 14 (citing Docket No. 102-1 at ¶¶ 50-53).
Defendant also contends that terms such as “element” and “component” are “nonce words
that reflect nothing more than verbal constructs that may be used in a claim in a manner that is
tantamount to using the word ‘means’ because they typically do not connote sufficiently definite
structure.” Id. (citing Williamson, 792 F.3d at 1350). Defendant also argues that adding the
functional modifiers “navigation” and “handler” fails to “impart structure into” the terms
“element” and “component.” Docket No. 98 at 14 (citing Docket No. 102-1 at ¶¶ 51-53).
Defendant further argues that the ’361 Patent specification never describes the “navigation element
handler component” in structural terms, but instead identifies functions performed by the
“navigation element handler component.” Docket No. 98 at 16 (citing Docket No. 102-1 at ¶¶ 5556; ’361 Patent at 13:25–27, 14:17–19, 14:26–28, 14:37–38, Figure 3, 4). According to Defendant,
the term “navigation element handler component” invokes § 112, ¶ 6. Docket No. 98 at 16.
Regarding the phrase “navigation director component,” Defendant argues that the
limitation replaces the term “means” with the term “component” and then recites a function
performed by the “navigation director component.” According to Defendant, the claim language
indicates that the “navigation director component” performs a function but does not recite any
structure for performing that function. Docket No. 98 at 17. (citing Docket No. 102-1 at ¶¶ 61-65).
Defendant also contends that the ’361 Patent does not provide any structural guidance
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regarding the “navigation director component.” Docket No. 98 at 17. According to Defendant,
the patent refers to the component only in terms of functionality rather than describing structure
for performing those functions. Id. (’361 Patent at 16:29–32, 16:49, 18:10). Defendant argues that
the “navigation director component” is a means-plus-function limitation because the specification
“only describes the term’s function and interaction with other parts in the system” without
providing structure for performing that function. Docket No. 98 at 18 (citing Media Rights, 800
F.3d at 1373).
Defendant next argues that the specification fails to disclose any structure for performing
the recited functions. Docket No. 98 at 18. According to Defendant, the patent depicts both
“components” as black boxes, without providing any structural or algorithmic information about
those boxes. Id. (citing ’361 Patent at Figures. 3, 4a-d). Defendant contends that the specification
simply repeats the claimed functions, or refers to additional functions that may be performed by
the components. Docket No. 98 at 18 (citing ’361 Patent at 13:50–54, 14:11–19; 14:25–26, 15:11–
13, 15:42–45, 16:25–27, 16:62–65, 17:57–59, 15:52–55, 17:43–47, 13:25–27, 14:35–38, 14:53–
55, 15:7–10, 16:27–30, 16:65–17:2, 17:26–27; 17:60–62, 19:48–53, 20:2–12, 16:13–15, 16:27–
36, 16:46–50, 16:65–17:7, 17:32–42, 17:60–18:1, 18:5–15; Docket No. 102-1 at ¶¶ 57-60, 68-72.)
Defendant argues that this type of functional claiming “is impermissible under the statute.” Docket
No. 98 at 18 (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211
(Fed. Cir. 2003)).
Regarding the phrase “navigation element handler component . . .,” Plaintiff replies that
Defendant has not overcome the presumption that § 112, ¶ 6 does not apply. Docket No. 121 at
13.
Plaintiff argues that there are multiple structural terms between the appearance of “a
navigation element handler component” as part of a system, and the later appearance of the term
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in Claim 17 when it recites “the navigation element handler component that during operation of
the system detects a user input corresponding to the first navigation control.” Id. Plaintiff contends
that Defendant overlooks all of the interrelated structural components that provides context to the
meaning of the term “navigation element handler component.” Id.
Regarding the phrase “navigation director component . . .,” Plaintiff replies that Defendant
has not overcome the presumption that § 112, ¶ 6 does not apply. Id. Plaintiff contends that there
is no evidence that “means for” can be fungible with “navigation director component.” Id.
Plaintiff further argues that the specification provides sufficient structure. Id. (citing ’361 Patent
at 15:52–16:5).
For the following reasons, the Court finds that the phrase “navigation element handler
component that . . . detects a user input corresponding to the first navigation control” is
governed by 35 U.S.C. § 112, ¶ 6, and is indefinite. The Court further finds that the phrase
“navigation director component that . . . sends, in response to detecting the user input,
navigation information to navigate to the second visual component” is governed by 35 U.S.C.
§ 112, ¶ 6, and is not indefinite.
2. Analysis
The phrase “navigation element handler component that . . . detects a user input
corresponding to the first navigation control” appears in asserted claim 17 of the ’361 Patent. The
phrase “navigation director component that . . . sends, in response to detecting the user input,
navigation information to navigate to the second visual component” also appears in asserted claim
17 of the ’361 Patent. For the following reasons, the Court finds that the phrases are subject to §
112, ¶ 6.
Page 26 of 67
a. Determining Whether the Disputed “Component” Terms are
Means-Plus-Function Terms
Here, there is a rebuttable presumption that § 112, ¶ 6 does not apply because the claim
does not recite the word “means.” Therefore, the analysis proceeds in two steps.3 Starting with
the first step, Defendant argues that the phrases are is drafted “in a format consistent with
traditional means-plus-function claim limitations.” Docket No. 98 at 13 (citing Williamson, 792
F.3d at 1350). According to Defendant, the limitations replace the term “means” with the term
“component,” and then recite a function performed by each component. Id. The Court agrees that
the terms “navigation element handler component . . .” and “navigation director component . . .”
invoke the application of § 112, ¶ 6. Both phrases fail to describe a sufficient structure and
otherwise recite abstract elements for performing functions.
The claim terms “navigation element handler component . . .” and “navigation director
component . . .“ by themselves, do not identify a structure by its function, nor do the asserted
claims suggest that the phrases connote a definite structure. See Media Rights Techs., Inc. v.
Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (finding that the term “compliance
mechanism” invokes § 112, ¶ 6, because the asserted claims “simply state that the ‘compliance
mechanism’ can perform various functions”). Likewise, the functional modifiers “navigation,”
“element,” “handler,” and “director” fail to impart structure into the term “component.” The
ordinary meanings of these terms do not connote structure, and neither the specification nor the
prosecution history gives these adjectives any structural significance in this claim. Instead, the
“components” terms are coined for the purposes of the asserted patent. Indeed, the terms are not
used in “common parlance or by persons of skill in the pertinent art to designate structure,” such
3
The applicable law relating to the determination and construction of means-plus-function terms
is included in the Analysis Section of “The Disputed ‘Code For’ Terms in The ’361 Patent.”
Page 27 of 67
that it connotes sufficient structure to avoid the application of 35 U.S.C. § 112, ¶ 6. Lighting
World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir. 2004), overruled on other
grounds by Williamson, 792 F.3d at 1348-49. Defendant’s expert offers the unrebutted testimony
that “navigation element handler component” and “navigation director component” are not terms
that are used in common in the fields of computer science or electrical engineering. Docket No.
102-1 at ¶¶ 51-52, ¶¶ 62-63.
To support its position, Plaintiff offers the unsupported assertion of its expert that the
meaning of these terms are “sufficiently apparent.” Docket No. 93-1 at ¶¶ 22-24. Plaintiff’s expert
fails to identify what that meaning would be to a POSITA or cite any evidentiary support. In such
cases, “an expert’s conclusory, unsupported assertions as to a term’s definition are entirely
unhelpful to a court.” P & RO Sols. Grp. v. CiM Maint., Inc., 273 F. Supp.3d 699, 703 (E.D. Tex.
2017). More importantly, Plaintiff’s expert does not opine that the terms “navigation element
handler component” and “navigation director component,” or the related claim language, describes
sufficient structure to a person of ordinary skill in the art.
Moreover, the specification explicitly states that these components are “means for”
examples, and uses the same functional language as in the claims except that the specification
recites “means for” performing those functions whereas the claims recite the respective
“component” doing so. Specifically, the specification states “a system for navigating between
visual components includes means for detecting a user input corresponding to the first navigation
control. For example, as illustrated in FIG. 3, navigation element handler component 306 is
configured for detecting a user input corresponding to the first navigation control,” ’361 Patent at
14:14-19 (emphasis added). Likewise, the specification states “a system for navigating between
visual components includes means for sending, in response to detecting the user input, navigation
Page 28 of 67
information to navigate to the second visual component. For example, as illustrated in FIG. 3,
navigation director component 308 is configured for sending, in response to detecting the user
input, navigation information to navigate to the second visual component.” ’361 Patent at 15:4955 (emphasis added). Thus, a person of ordinary skill in the art would understand that the ’361
Patent uses “component” as a synonym for “means for.” Accordingly, Defendant has rebutted the
presumption that § 112, ¶ 6 does not apply to the “component” terms.
Plaintiff argues that claim 17 indicates that the phrase is part of a “system for navigating
between visual components.” Docket No. 93 at 28. Plaintiff contends that there are multiple
structural terms between the first appearance of the “component” terms as part of a system, and
the later appearance of the terms in Claim 17. Like the disputed “component” terms, the other
“multiple structural terms” that appear in claim 17 are coined for the purposes of the asserted
patent. The terms are not used in “common parlance or by persons of skill in the pertinent art to
designate structure,” such that it connotes sufficient structure to avoid the application of 35 U.S.C.
§ 112, ¶ 6. Contrary to Plaintiff’s contention, the claim language does not explain the duties of
the “component” term, but instead merely recites functional language.4 Accordingly, Defendant
has rebutted the presumption that § 112, ¶ 6 does not apply to the “component” terms.
b. Construing the Terms that are Subject to § 112, ¶ 6.
“The first step in construing [a means-plus-function] limitation is a determination of the
function of the means-plus-function limitation.” Medtronic, 248 F.3d at 1311. The Court finds
that the recited function for the first term is “detects a user input corresponding to the first
navigation control.” The Court finds that the recited function for the second term is “sends, in
4
Plaintiff presented a number of general arguments regarding the application of § 112, ¶ 6 to all
of the disputed means-plus-function term. The Court addressed these arguments in the Analysis
Section of “The Disputed ‘Code For’ Terms in The ’361 Patent.”
Page 29 of 67
response to detecting the user input, navigation information to navigate to the second visual
component.” Having determined the function, “the next step is to determine the corresponding
structure disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311.
Regarding the phrase “navigation element handler component,” the claims and the
specification fail to disclose any structure for performing the recited function. There is no
algorithm or structure described in any form for the recited function. The specification merely
provides functional language and does not contain any process for detecting “a user input
corresponding to the first navigation control.” Furthermore, the specification of the ’361 Patent
does not describe the “navigation element handler component” in structural terms. Rather, the
specification identifies functions performed by the “navigation element handler component.” In
fact, as discussed above, the specification equates the term “navigation element handler
component” to “means for.”
Plaintiff contends that the specification supports its position that no construction is needed
for this term. Docket No. 93 at 27 (citing ’361 Patent at 14:17–19, Figures 3, 4a-d). As it relates
to the term “navigation element handler component,” the “structure” cited by Plaintiff is a generic
black box devoid of any physical structure or algorithm:
Page 30 of 67
’361 Patent at Figure 3 (highlighted). Figures 4a-d, do not provide any additional structure, but
instead rearrange the boxes of Figure 3. Figure 4a is shown below as one example:
Page 31 of 67
’361 Patent at Figure 4a (highlighted). Likewise, the “algorithm” disclosed in Figure 2 only
repeats the functional language recited in the claims. See ’361 Patent at Figure 2 (Box 206 “Detect a user input corresponding to the first navigation control”). “Merely restating the function
in the specification is insufficient to provide the required algorithm.” Cloud Farm Assocs. LP v.
Volkswagen Grp., Inc., 674 F. App’x 1000, 1010-11 (Fed. Cir. 2017).
The rest of the specification makes no reference to any structure. The specification only
provides functional language and does not contain any step-by-step process or other indication of
structure.
The recited functions must be performed by some component disclosed in the
specification; however, the specification does not describe these components. “While it is true
that the patentee need not disclose details of structures well known in the art, . . . the specification
must nonetheless disclose some structure.” Default Proof Credit Card Sys., Inc. v. Home Depot
U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) (emphasis added). Accordingly, “[t]here is no
specific algorithm disclosed in prose, as a mathematical formula, in flow charts, or otherwise” in
the ’361 Patent for performing the functions associated with the “navigation element handler
component” limitation. Function Media, 708 F.3d at 1318. Thus, the “navigation element handler
component” term is indefinite for failure to disclose corresponding structure.
Regarding the phrase “navigation director component that . . . sends, in response to
detecting the user input, navigation information to navigate to the second visual component,” the
specification does disclose corresponding structure for performing the recited function.
Specifically, the specification states the following:
Sending the navigation information may include sending the navigation
information by invoking a function, a method, and/or a subroutine. Sending the
navigation information may include sending the navigation information by sending
a message via a network. The message may be sent asynchronously. The message,
in another aspect, may be included in a request/response exchange. Sending the
navigation information may include sending the navigation information by sending
Page 32 of 67
data via an inter-process communication (IPC) including, for example, a message
queue, a pipe, an interrupt, a semaphore, and/or a lock. Sending the navigation
information may include sending the navigation information via a shared data area.
’361 Patent at 15:60–16:5 (emphasis added). Defendant’s expert, Dr. Schonfeld, opines that these
are “further functionality.” Docket No. 102-1 at ¶ 70. The Court disagrees and finds that the
specification identifies these as one or more steps used to perform the recited function of sending
“in response to detecting the user input, navigation information to navigate to the second visual
component.” Finally, in reaching its conclusion, the Court has considered the extrinsic evidence
submitted by the parties and gives it its proper weight in light of the intrinsic evidence.
3. Court’s Construction
In light of the evidence, the Court finds that the phrase “navigation element handler
component that . . . detects a user input corresponding to the first navigation control” is
governed by 35 U.S.C. § 112, ¶ 6, and is indefinite for failure to disclose corresponding structure.
In light of the evidence, the Court finds that the phrase “navigation director component
that . . . sends, in response to detecting the user input, navigation information to navigate to
the second visual component” is governed by 35 U.S.C. § 112, ¶ 6, and construes the phrase as
follows:
Function: Sends, in response to detecting the user input, navigation information to
navigate to the second visual component.
Corresponding Structure: A processor programmed to perform one or more of the
steps for sending navigation information disclosed in the ’361 Patent at 15:60–16:5.
C. The Disputed “Code For” Terms In The ’299 And ’264 Patent
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Disputed Term
“code for indicating . . . that
[a] media player is allowed
to play [a] media stream via
[a presentation device]”
Plaintiff’s Proposal
Not subject to § 112, ¶ 6.
(plain and ordinary
meaning)
“code for working in
Not subject to § 112, ¶ 6.
association with a first
(plain and ordinary
presentation device having a meaning)
touchscreen that is capable of
providing access to a first
media player and a second
media player in an execution
environment, the first
presentation device capable
of communication with a
second presentation device
including a display via a
wireless network on which
the first presentation device
resides, where [execution
environment] presentation
focus information is
accessible for identifying
whether at least one of the
first presentation device or
the second presentation
device is to be utilized for
presentation in connection
with the applications”
Defendant’s Proposal
Subject to § 112, ¶ 6.
Function: “indicating . . . that
[a] media player is allowed to
play [a] media stream via [a]
presentation device.”
Structure: ’299 patent at
13:55-14:21, 22:58-23:4,
25:20-27
Subject to § 112, ¶ 6.
Function: “working in
association with a first
presentation device having a
touchscreen that is capable of
providing access to a first
media player and a second
media player in an execution
environment, the first
presentation device capable of
communication with a second
presentation device including a
display via a wireless network
on which the first presentation
device resides, where
[execution environment]
presentation focus information
is accessible for identifying
whether at least one of the first
presentation device or the
second presentation device is
to be utilized for presentation
in connection with the
applications”
Structure: none
1. The Parties’ Positions
The parties dispute whether the phrases “code for indicating . . . ” and “code for working .
. . “ are subject to § 112, ¶ 6. Regarding the term “code for working,” Plaintiff argues that the
disputed phrase recites sufficient structure for performing the recited function. Docket No. 93 at
10. Plaintiff contends that in the parlance of software design, “code for …” sufficiently designates
Page 34 of 67
structure. Id. Plaintiff further contends that Defendant has failed to overcome the presumption
that the disputed terms are not means-plus-function terms governed by 35 U.S.C. § 112, ¶ 6. Id. at
12. Plaintiff also argues that the patentee stated in the prosecution history that “no claims are
intended to be construed under 35 U.S.C. 112, paragraph 6.” Id. at 13 (citing Docket No. 93-11
at 23).
Regarding the term “code for indicating,” Plaintiff argues that each patent family history
indicates during the prosecution that it is not utilizing 112(6) in the claims. Docket No. 93 at 14
(citing Docket No. 93-11 at 51). Plaintiff also argues that the term is not just code, but specialized
structure in the form of code of a computer program product embodied on a non-transitory
computer readable medium. Docket No. 93 at 15. Plaintiff contends that since § 112, ¶ 6 does not
apply, no further construction is required. Id.
Regarding the term “code for indicating,” Defendant responds that these limitations are
written in traditional means-plus-function format with the term “code for” replacing “means for”
followed by recitation of a function. Docket No. 98 at 19. Defendant also argues that the term
“code for” in the ’299 Patent does not convey any definite structure to a POSITA. Id. (citing
Docket No. 102-1 at ¶¶ 22-24, 106-109). Finally, Defendant contends that the ’299 Patent equates
the terms “code for” and “means for” as it associates those terms with the same functional
language. Docket No. 98 at 19 (citing ’299 Patent at 13:37–41, 22:48–52, 25:10–15). Assuming
the term “code for” requires the application of § 112, ¶ 6, Defendant identifies the passages at
13:63–14:5, 22:58–23:4, and 25:20–27 of the ’299 Patent as the algorithm for performing the
recited function. Docket No. 98 at 19-20 (citing Docket No 102-1 at ¶ 111).
Regarding the term “code for working,” Defendant responds that the term “code for”
renders this language a means-plus-function limitation under § 112, ¶ 6. Docket No. 98 at 20
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(citing Docket No. 102-1 at ¶¶ 94-97). Defendant argues that the ’299 and ’264 Patents are devoid
of any structural disclosure for performing the recited function. Docket No. 98 at 20 (citing Docket
No. 102-1 at ¶¶ 97-99). According to Defendant, the patent specification never discusses the
recited functionality, much less discloses and links structure for performing the functionality.
Docket No. 98 at 20.
Regarding the term “code for working,” Plaintiff replies that the inventor made a clear
disclaimer that he was not invoking § 112, ¶ 6. Docket No. 121 at 4 (citing Docket No. 98-11).
Plaintiff contends that there is no indication § 112, ¶ 6 applies when reading the claims,
specification, and prosecution. Docket No. 121 at 5. Plaintiff further contends that Defendant has
failed to overcome the presumption that the disputed terms are not means-plus-function terms
governed by 35 U.S.C. § 112, ¶ 6. Id.
Regarding the term “code for indicating,” Plaintiff replies that Defendant ignores the ’299
specification at least at Col. 13:33-54, which provides structure for the term “code for indicating.”
Id. at 9 (citing ’299 Patent at 13:42–46, 13:33–54). Plaintiff argues that Defendant also ignores
the ’299 Patent specification dealing specifically with blocks 452a-c in Figures 4a-c and 552 in
Fig. 5, which it contends provide further structure for the term “code for indicating.” Docket No.
121 at 9-10 (citing ’299 Patent at 22:44–23:4, 25:7–27).
For the following reasons, the Court finds that the phrase “code for indicating . . . that [a]
media player is allowed to play [a] media stream via [a presentation device]” is governed by
35 U.S.C. § 112, ¶ 6, and is not indefinite. The Court further finds that the phrase “code for
working in association with a first presentation device having a touchscreen that is capable
of providing access to a first media player and a second media player in an execution
environment, the first presentation device capable of communication with a second
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presentation device including a display via a wireless network on which the first presentation
device resides, where [execution environment] presentation focus information is accessible
for identifying whether at least one of the first presentation device or the second presentation
device is to be utilized for presentation in connection with the applications” is not governed
by 35 U.S.C. § 112, ¶ 6.
2. Analysis
The phrase “code for indicating . . .” appears in asserted claims 1, 17, and 26 of the ’299
Patent, and asserted claim 61 of the ’264 Patent. The Court finds that the phrase is used
consistently in the claims and is intended to have the same general meaning in each claim. The
phrase “code for working . . .” appears in asserted claims 1, 17, and 26 of the ’299 Patent, and
asserted claim 61 of the ’264 Patent. The Court finds that the phrases are used consistently in the
claims and are intended to have the same general meaning in each claim.
a. Determining Whether the Disputed “Code For” Terms are MeansPlus-Function Terms
Here, there is a rebuttable presumption that § 112, ¶ 6 does not apply because the claim
does not recite the word “means.” Therefore, the analysis proceeds in two steps.5 Starting with
the first step, Defendant argues that the term “code for” does not convey any definite structure to
a POSITA that could be used to perform the function. In this instance, the Court agrees with
Defendant that the term “code for indicating,” in the context of the asserted claims and intrinsic
evidence, does not connote sufficiently definite structure. The term “code for” is defined only by
the function that it performs. Specifically, “code for indicating . . . that [a] media player is allowed
to play [a] media stream via [a presentation device].”
5
The applicable law relating to the determination and construction of means-plus-function terms
is included in the Analysis Section of “The Disputed ‘Code For’ Terms in The ’361 Patent.”
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Moreover, the specification equates “code for” and “means for” by using the same
functional language as in the claims except that the specification recites “means for” performing
those functions whereas the claims recite “code for” doing so. Specifically, the specification
repeatedly states “a system for coordinating playing of media streams includes means for
indicating, in response to determining the first media player has first presentation focus, that the
first media player is allowed to play the first media stream via the first presentation device.” 299
at 13:37–41, 22:48–52, 25:10–15 (emphasis added). Thus, a person of ordinary skill in the art
would understand that the ’299 Patent uses the terms “code for indicating” and “means for
indicating” as synonyms. Accordingly, Defendant has rebutted the presumption that § 112, ¶ 6
does not apply to the “code for indicating” term. 6
Regarding the term “code for working,” the Court finds that Defendant has not rebutted
the presumption that § 112, ¶ 6 does not apply, but instead has conflated the steps in the § 112, ¶
6 analysis. Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298-1299 (Fed. Cir. 2014) (“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.”); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-09 (Fed. Cir. 2018) (holding that
the district court erred by effectively treating “program” and “user interface code” as nonce words
and concluding in turn that the claims recited means-plus-function limitations.).
In contrast to the claims in Williamson, the claim language here does not describe broadly
phrased high-level functions such as “receiving communications” or “coordinating the operation
of the streaming data module.” Williamson, 792 F.3d at 1344. Instead, the claims describe the
6
Plaintiff presented a number of general arguments regarding the application of § 112, ¶ 6 to all
of the disputed means-plus-function term. The Court addressed these arguments in the Analysis
Section of “The Disputed ‘Code For’ Terms in The ’361 Patent.”
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objectives and operations of the computer program product as “working in association with a first
presentation device having a touchscreen that is capable of providing access to a plurality of
applications including a first media player and a second media player in an execution environment,
the first presentation device capable of communication with a second presentation device including
a display via a wireless local area network on which the first presentation device resides, where
execution environment presentation focus information is accessible for identifying whether at least
one of the first presentation device or the second presentation device is to be utilized for
presentation in connection with the applications.”
The claims further describe the structural interactions among the “code for working” by
reciting “wherein the computer program product is operable such that a change in presentation
focus is capable of being based on at least one of a releasing of a first presentation focus in
connection with the first media player, a detected user input indication for giving the second media
player second presentation focus, a change in input focus, a change in an attribute of a user
interface element, a count of media streams being played, a ranking of media streams being played,
a transparency level of at least one of the user interface element, or another user interface element
sharing a region of a display of the first presentation device.”
Thus, a person of ordinary skill in the art would understand that the claim language recites
sufficient structure, and that the term “code for working” is not used as a generic term or black
box recitations of structure or abstractions. Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-09
(Fed. Cir. 2018) (“[A] person of ordinary skill in the art could reasonably discern from the claim
language that the words ‘program,’ . . . and ‘user interface code,’ . . . are used not as generic terms
or black box recitations of structure or abstractions, but rather as specific references to
conventional graphical user interface programs or code, existing in prior art at the time of the
Page 39 of 67
inventions.”) (emphasis added). Indeed, unlike the other “code for” terms, the specification of the
’299 Patent does not use the term “code for working” as a synonym for “means for.”
In summary, although the presumption against § 112 ¶ 6 is no longer “strong,” it is still a
presumption that Defendant must affirmatively overcome. In the context of this intrinsic record,
the Court finds that Defendant has not shown that “code for working . . .” should be subject to §
112, ¶ 6. Accordingly, the Court rejects Defendant’s argument that the “code for working . . .” is
a means-plus-function term governed by § 112 ¶ 6, and finds that no further construction is
required.
b. Construing the Terms that are Subject to § 112, ¶ 6.
“The first step in construing [a means-plus-function] limitation is a determination of the
function of the means-plus-function limitation.” Medtronic, 248 F.3d at 1311. The Court finds
that the recited function for the first term is “indicating that [a] media player is allowed to play [a]
media stream via [a] presentation device.” Having determined the limitation’s function, “the next
step is to determine the corresponding structure disclosed in the specification and equivalents
thereof.” Medtronic, 248 F.3d at 1311.
Regarding the phrase “code for indicating,” the corresponding structure disclosed in the
specification is as follows:
In various aspects, a play and/or a no-play indication may be provided in different
ways. In one aspect, presentation access component 352 may call and/or otherwise
instruct the first media player to change its mode of operation to play mode to
provide a play indication. Similarly, presentation access component 352 may
instruct the first media player to enter a mode other than play mode in providing a
no-play indication.
In another aspect, presentation access component 352 may detect access by a first
media player to the first presentation device by being included in and/or otherwise
intercepting stream data sent from the first media player to the first presentation
device. Presentation access component 352 may process the data for presentation
as configured, and/or pass it along unprocessed for processing by the first
presentation device and/or another component included in the process of presenting
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the media stream, thus indicating the first media player is allowed to play the first
media stream.
In yet another aspect, presentation access component 352 may include and/or
otherwise make use of a serialization mechanism such as a semaphore or lock.
Presentation access component 352 may provide a play indication by not blocking
and/or by unblocking a thread of execution for presenting the first media stream on
the first presentation device by the first media player. Alternatively or additionally,
presentation access component 352 may provide a play indication by being
included in and/or otherwise interoperating with a thread/process scheduler to put
one or more threads for playing the first media stream in a run state. Sending a noplay indicator may analogously be performed and/or otherwise provided for by
presentation access component 352 by causing one or more threads for playing the
first media stream to be blocked from execution by processor 104.
Providing a play indication may further include sending and/or receiving a message
via a network to and/or from, respectively, a remote node where either the node
hosting presentation access component 352 or the remote node is operatively
coupled to a presentation device for presenting a media stream. Presentation access
component 352 may be adapted to operate in a client node, a server node, and/or an
intermediary node such as a proxy server. A no-play indicator may be provided
similarly.
’299 Patent at 13:55–14:30 (emphasis added). The specification further states the following:
In FIG. 4a, presentation access component 452a may indicate a media player is
allowed to play a media stream by passing intercepted invocations and data to a
driver for the targeted presentation devices. In FIG. 4b, presentation access
component 452b may indicate a media player is allowed to play a media stream by
passing intercepted data from media content handler 434 to media UI element
handler 432b allowing access to the targeted presentation device(s). In FIG. 4c,
presentation access component 452c may indicate a media player is allowed to play
a media stream by passing intercepted data from media UI element handler 432c to
GUI subsystem 420c, graphics subsystem 422c, audio subsystem 428c, and/or other
presentation components allowing access to the targeted presentation device(s).
Alternatively or additionally, in FIG. 4a, FIG. 4b, and FIG. 4c, presentation access
component 452 may receive a request for permission to access a presentation
device. Presentation access component 452 may block or allow a requesting thread
to run based on the determination by focus director component 456 as described
above. In another aspect, presentation access component 452 may respond to a
request for permission providing a play or a no-play identifier to the calling
presentation subsystem component. The calling component may access or not
access a corresponding presentation device based on the identifier.
’299 Patent at 22:58–23:4 (emphasis added). The specification also states the following:
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In FIG. 5, presentation access component 552 may indicate a media player is
allowed to play a media stream by passing intercepted invocations and data to
media player UI element handler 532 for a presenting on a presentation device of a
client node, such as use node 602. In FIG. 5, presentation access component 552
may indicate a media player is allowed to play a media stream by passing
intercepted data from media streamer 534 to media UI element handler 532.
Alternatively or additionally, in FIG. 5, presentation access component 552 may
receive a request for permission to access media player UI element handler 532,
media streamer 534, and/or another component included in playing a media stream.
Presentation access component 552 may block or allow a requesting thread to run
based on the determination by focus director component 556 as described above.
In another aspect, presentation access component 552 may respond to a request for
permission providing a play or a no-play return value and/or parameter value to
the calling component. The calling component may access or not access a
corresponding presentation device based on the return value and/or parameter
value.
’299 Patent at 25:20–40 (emphasis added). Defendant’s expert, Dr. Schonfeld, generally identifies
these portions of the specification as the corresponding structure. Docket No. 102-1 at ¶ 111.
However, the Court finds that Defendant’s structure is incomplete for two of the identified portions
of the specification. Accordingly, the complete portions are identified above. Finally, in reaching
its conclusion, the Court has considered the extrinsic evidence submitted by the parties and gives
it its proper weight in light of the intrinsic evidence.
3. Court’s Construction
In light of the evidence, the Court finds that the phrase” “code for working in association
with a first presentation device having a touchscreen that is capable of providing access to a
first media player and a second media player in an execution environment, the first
presentation device capable of communication with a second presentation device including
a display via a wireless network on which the first presentation device resides, where
[execution environment] presentation focus information is accessible for identifying whether
at least one of the first presentation device or the second presentation device is to be utilized
for presentation in connection with the applications” is not governed by 35 U.S.C. § 112, ¶ 6,
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and will be given its plain and ordinary meaning.
In light of the evidence, the Court finds that the phrase “code for indicating . . . that [a]
media player is allowed to play [a] media stream via [a presentation device]” is governed by
35 U.S.C. § 112, ¶ 6, and construes the phrase as follows:
Function: Indicating that [a] media player is allowed to play [a] media stream via [a]
presentation device.
Corresponding Structure: A processor programmed to perform one or more of the
steps for indicating that [a] media player is allowed to play [a] media stream via [a]
presentation device disclosed in the ’299 Patent at 13:55–14:30, 22:58–23:4, 25:20–40.
D. “allowed”
Disputed Term
“allowed”
Plaintiff’s Proposal
(plain and ordinary meaning)
Defendant’s Proposal
“permitted”
1. The Parties’ Positions
The parties dispute whether “allowed” should be construed to mean “permitted,” as
Defendant contends. Plaintiff argues that the term “allowed” appears “in abundance in all of the
patents that have the disputed phrase appearing in an asserted patent claim.” Docket No. 93 at 6.
Plaintiff also argues that the claim language for the disputed term “allowed” is dispositive, and
that the term does not need any construction when read in the context of the claim. Id. (citing ’299
Patent at claim 17, 63). According to Plaintiff, there is no need to replace the inventor’s selected
term “allowed” with Defendant’s proposed construction “permitted.” Docket No. 93 at 7.
Defendant responds that its construction is based on the fundamental objective of the ’299
Patent, and the patent’s teachings for allowing a media player to play a media stream only when it
is given permission to do so. Docket No. 98 at 24 (citing ’299 Patent at 1:20–31, 1:55–56,
Abstract). Defendant argues that the ’299 Patent achieves its objective of coordinating the playing
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of media streams by using “presentation focus” to provide permission to play to a particular media
player. Docket No. 98 at 25 (citing ’299 Patent at 9:46–47, 2:24–27, 2:37–42, 23:5–13, 25:29–
37, 26:1–5). Defendant also contends that the ’299 Patent’s description of “allowed” to mean
“permitted” accords with the common definition of “allow.” Docket No. 98 at 26 (citing Docket
No. 98-6 at 4). Defendant further argues that there are at least two ordinary meanings of “allowed”
that fit the context of the ’299 Patent, and that the ordinary meaning of the term “allowed” does
not resolve the parties’ dispute. Docket No. 98 at 26 (citing O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)).
Plaintiff replies that Defendant’s own dictionary definition for “allow” undermines its
position when it points out the differences between the term “allow” and “permit.” Docket No.
121 at 4 (citing Docket No. 98-6). Plaintiff argues that Phillips indicates the claim language as
vetted and issued by the patent office is normally given its plain and ordinary meaning. Docket
No. 121 at 4 (citing Phillips, 415 F.3d at 1312).
For the following reasons, the Court finds that the term “allowed” should be given its plain
and ordinary meaning.
2. Analysis
The term “allowed” appears in asserted claims 1, 17, 27, and 28 of the ’299 Patent, and
asserted claim 61 of the ’264 Patent. The Court finds that the term is used consistently in the
claims and is intended to have the same general meaning in each claim. The Court further finds
that Defendant has not provided a persuasive reason for replacing “allowed” with “permitted.”
The term “allowed” is used significantly more than “permitted” in the asserted patents. For
example, Plaintiff notes that “allowed” appears over 68 times in the ’299 Patent, 49 times in the
’264 Patent, and 34 times in the ’558 Patent. Docket No. 93 at 6. In contrast, the term “permitted”
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appears only once in each of the three patents, and the term “permission” only appears nine times
in each patent. Docket No. 98 at 26 n.7.
More importantly, the disputed phrase “allowed” does not require construction when read
in the context of the surrounding claim language. For example, claim 17 of the ’299 Patent recites
“code for indicating, if the first presentation device is to be utilized for presentation based on the
execution environment presentation focus information, that the first media player is allowed to
play the first media stream via the first presentation device; code for indicating, if the second
presentation device is to be utilized for presentation based on the execution environment
presentation focus information, that the first media player is allowed to play the first media stream
via the second presentation device.” ’299 Patent at 31:3–11 (emphasis added). This claim
language is not overly technical or confusing. The claim recites that the code indicates which
presentation device is allowed to play the media stream based on the “presentation focus
information.”
The parties agree that “presentation focus information” means “data that identifies one or
more media players and whether the media players have presentation focus.” Docket No. 111-1
at 26-27. The parties further agree that “presentation focus” means “an attribute associated with a
media player, directly and/or indirectly, indicating whether the media player is allowed to access
one or more presentation devices for playing one or more corresponding media streams on the
presentation devices; an attribute for restricting and coordinating access to an output device by
one or more applications.” Docket No. 111-1 at 27 (emphasis added). Thus, the claim language
indicates that it is the “presentation focus information” that indicates permission to play the media.
Thus, there is no reason to replace the patentees selected term “allowed” with Defendant’s
proposed “permitted.” Accordingly, the Court finds that the term does not require construction,
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because the claim language is unambiguous, and is easily understandable by a jury, and should be
given its plain and ordinary meaning.
Defendant argues that the ’299 Patent achieves its objective of coordinating the playing of
media streams by using presentation focus to provide permission to play to a particular a media
player. Defendant cites to the specification and argues that the ’299 Patent “repeatedly explains
that a media player may play a stream only if it has ‘permission.’ ” Docket No. 98 at 25. As
discussed above, the specification uses the term “allowed” far more often in disclosing how it
achieves its objective. Moreover, the specification states that “[t]he method further includes
determining, by the media player, that the media player has presentation focus indicating
permission to play the media stream via the presentation device.” ’299 Patent at 2:24–27.
Consistent with the claims, the specification states that it is the “presentation focus” that indicates
“permission to play.” See, e.g., ’299 Patent at 21: 43-45 (“[M]edia players are determined to not
have presentation focus indicating they must be paused and/or otherwise prevented from playing.”)
(emphasis added).
Defendant also submits an extrinsic dictionary definition that defines “allow” to mean “to
give permission to or for; permit.” Docket No. 98 at 26 n.7. This extrinsic evidence does not
change the analysis. As discussed, the ’299 Patent achieves the claimed objectives by indicating
which presentation device is “allowed to play” the media stream based on the “presentation focus
information.” Thus, the claim language recites that it is the “presentation focus information” that
indicates permission to play the media. Defendant failed to consider the term “allowed” in the
context of the surrounding claim language and failed to provide a persuasive reason to redraft the
claims as it proposes. Finally, in reaching its conclusion, the Court has considered the extrinsic
evidence submitted by the parties and gives it its proper weight in light of the intrinsic evidence.
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3. Court’s Construction
The term “allowed” will be given its plain and ordinary meaning.
E. “application region”
Disputed Term
“application region”
“first application region”
Plaintiff’s Proposal
“a region in a presentation space
that includes the visual
component”
Defendant’s Proposal
“an area on a display device
that is defined by the
boundary of the application
window”
1. The Parties’ Positions
The parties dispute whether the “application region” must be “defined by the boundary of
the application window,” as Defendant proposes. Plaintiff argues that “application region” is a
term that appears in the claim language and also in the specification. Docket No. 93 at 18 (quoting
without citation: “a region in a presentation space that includes the visual component”). Plaintiff
contends that the term “presentation space” that is used in the definition of “application region”
also needs background. Docket 93 at 18 (citing ’299 Patent at 8:1–12). Plaintiff also argues that
it would be improper to limit the disputed term “application region” to “the area of a computer
display” because it may be projected up on a wall or to another computer. Docket No. 93 at 18
(citing ’361 Patent at 12:23–31, 13:21–32, 17:32–65, Figures 2, 4a, 4b, 4c, 5, 6a-e, 7).
Defendant argues that the claims themselves establish that an “application region” is a
bounded area within a display space. Docket No. 98 at 28 (citing ’361 Patent at 31:14–15).
According to Defendant, the claims demonstrate that an “application region” must have
boundaries, otherwise it would not be possible for a drop down menu to be “at least” partially in
the application region. Docket No. 98 at 28. Defendant contends that Plaintiff’s construction
allows the “application region” to be unbounded, thereby making claim 97 illogical. Id.
Defendant further argues that the specification defines the boundaries of the “application
region.” Id. (citing ’361 Patent at 13:64–14:4, 19:36–39). Defendant contends that in order for a
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navigation region to (i) share a border with the application region, or (ii) be partially included in
the application region, or (iii) be outside the application region, the claimed “application region”
must be defined by boundaries as provided in its construction. Docket No. 98 at 29. Defendant
argues that Plaintiff’s construction entirely ignores an application region’s boundaries. Id.
Defendant also contends that Plaintiff’s construction merely rearranges the words already found
in the claim language, rendering various claim terms redundant and unnecessary. Id.
Plaintiff replies that the word “coextensive” does not appear in the specification. Docket
No. 121 at 10. Plaintiff further contends that this limitation should not be added to the construction
because there is no disclaimer. Id.
For the following reasons, the Court finds that the term “application region” should be
construed to mean “region in a presentation space that includes the visual component.” The
Court further finds that the term “presentation space” should be construed to mean “storage
region allocated and/or otherwise provided for storing presentation information.
For
example, a screen of a display.”
2. Analysis
The term “application region” appears in asserted claims 17, 50, 79, 97-99, 158, 159, and
163 of the ’361 Patent. The Court finds that the term is used consistently in the claims and is
intended to have the same general meaning in each claim. The Court further finds that the
specification provides an explicit definition for the term “application region.” Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“[A]n inventor may choose to be his
own lexicographer if he defines the specific terms used to describe the invention ‘with reasonable
clarity, deliberateness, and precision.’”) (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994)).
The specification states that “[i]n detecting and/or otherwise monitoring a visual
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component, a PS monitor component 402 may identify a region in a presentation space that
includes the visual component. The region is referred to herein as an ‘application region’.” ’361
Patent at 12:24–27.
Defendant responds that Plaintiff’s construction is based on “entirely different term‘presentation space.’ ” Docket No. 98 at 28. Defendant is correct that the term “presentation
space” is included in the definition of “application region” provided in the specification. However,
the specification also provides an explicit definition for the term “presentation space.” The
specification states that “[a]s used in this document, the term ‘presentation space’ refers to a
storage region allocated and/or otherwise provided for storing presentation information . . . ” ’361
Patent at 10:5–8. The specification adds that a screen of a display is an example of presentation
space, and that “[e]xemplary display devices include liquid crystal displays (LCDs), light emitting
diode (LED) displays, and projectors.” ’361 Patent at 10:17–18; 5:17–19. Accordingly, the Court
adopts the explicit definitions for “application region” and “presentation space” provided in the
specification of the ’361 Patent.
Defendant also argues that the claims indicate that an “application region” must have
boundaries. Docket No. 98 at 28. According to Defendant, Plaintiff’s construction allows the
“application region” to be unbounded. Id. Defendant further argues that Figures 6b and 6c defines
the boundaries of the “application region.” Defendant is correct that Figures 6b and 6c illustrate
an application region with boundaries, and further indicate that in these embodiments, the
application region shares a border with a navigation region. However, these are only exemplary
embodiments. See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir.
2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a
particular limitation. We do not read limitations from the specification into claims; we do not
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redefine words.”). Moreover, the specification provides an explicit definition for the disputed
term, which does not include the additional limitation Defendant proposes.
Defendant’s construction also adds the term “application window,” which only appears in
dependent claims. Furthermore, the Court disagrees with Defendant’s contention that the explicit
definition leaves the application region unbounded. The claims and the construction require the
“application region” to be a region in the “presentation space.” Thus, the “application region” is
bounded by the “presentation space.”
3. Court’s Construction
The term “application region” means “region in a presentation space that includes the
visual component.” The term “presentation space” means “storage region allocated and/or
otherwise provided for storing presentation information.
For example, a screen of a
display.”
F. “a second application region”
Disputed Term
“a second application
region”
Plaintiff’s Proposal
“a region in a presentation space
that includes the visual
component of the second
application”
It may be coextensive with the
first application region.
Defendant’s Proposal
“an application region that is
not coextensive with the first
application region”
1. The Parties’ Positions
The parties dispute whether the “second application region” may be “coextensive” with the
first application region.
Plaintiff argues that the figures shows two application regions
overlapping. Docket No. 93 at 20 (citing ’361 Patent at Figures 6b, 6c, 6d, and 6e). According to
Plaintiff, second application region may be coextensive with the first application region. Docket
No. 93 at 21. Plaintiff contends that this is consistent with its constructions for “application
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region” and “first application region,” and does not read out a preferred embodiment, like the one
displayed in Figures 6a-e. Id.
Defendant responds that Plaintiff’s construction would allow the first and second
application region to be the same exact region. Docket No. 98 at 30. Defendant contends that the
asserted claims require a “first application region” and a separate “second application region.” Id.
(citing ’361 Patent at 23:29–39). According to Defendant, the limitation “second application
region” identifies an area in the presentation space that does not extend over the same exact area
occupied by the first application region, i.e., the regions cannot be coextensive. Docket No. 98 at
31. Defendant argues that if the regions are coextensive, then the scope of the above-excerpted
claim language is identical with or without the underlined limitations. Id.
Defendant also argues that the Figures 6a-6e all show a first application, 604-1, and a
separate and distinct second application, 604-2. Id. Defendant contends that each application
occupies an application region defined by the boundary of the application window. Id. According
to Defendant, the specification consistently and repeatedly depicts the first and second application
regions as not coextensive. Id. Defendant concedes that the first and second application regions
may overlap, but argues that the claim language requires that the first and second applications
regions cannot be coextensive such that the first and second application regions cover the exact
same regions. Id.
Plaintiff replies that there is no “coextensive” limitation in the specification, and that the
patent actually teaches away from it. Docket No. 121 at 11.
For the following reasons, the Court finds that the term “a second application region”
should be construed to mean “region in a presentation space that includes the visual
component of the second application.”
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2. Analysis
The term “second application region” appears in asserted claims 17, 50, 79, 97-99, 158,
159, and 163 of the ’361 Patent. The Court finds that the term is used consistently in the claims
and is intended to have the same general meaning in each claim. As discussed with the previous
term, the specification provides an explicit definition for the term “application region.” The
specification states that “[i]n detecting and/or otherwise monitoring a visual component, a PS
monitor component 402 may identify a region in a presentation space that includes the visual
component. The region is referred to herein as an ‘application region’.” ’361 Patent at 12:24–27.
Thus, the “second application region” is “a region in a presentation space that includes the visual
component of the second application.”
Defendant contends that the construction should preclude the second application regions
from being “coextensive” with the first application region. Docket No. 98 at 30. Plaintiff argues
that Defendant’s construction is improper because the specification illustrates two application
regions overlapping. Docket No. 93 at 20. Defendant responds that it does not dispute that the
first and second application regions may overlap. Docket No. 98 at 31. Instead, Defendant argues
that “the first and second applications regions cannot be coextensive such that the first and second
application regions cover the exact same regions.” Id.
As Defendant concedes, the intrinsic record does not preclude the application regions from
overlapping, and in fact, discloses a number of embodiments where the application regions do
overlap. For example, Figure 6e illustrates the first application 604-1e overlapping second
application 604-2e.
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’361 Patent at Figure 6e (highlighted). In this embodiment, the first application almost completely
overlaps the second application. Defendant has not provided a persuasive reason why the
application regions cannot completely overlap. The claims recite two application regions, and to
satisfy the claim language, there must be two application regions. However, this does not preclude
the application regions from overlapping or extending “over the same exact area.” The claim and
intrinsic evidence only require a first application region associated with a first application, and a
second application region associated with a second application.
3. Court’s Construction
The term “a second application region” means “region in a presentation space that
includes the visual component of the second application.”
G. “application”
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Disputed Term
“application”
Plaintiff’s Proposal
“a software program that
performs a specific function”
Defendant’s Proposal
“software program that
performs a specific function,
such as word processors,
database programs, web
browsers, and image-editing
programs, as contrasted with
a utility or operating system”
1. The Parties’ Positions
The parties agree that an “application” is “a software program that performs a specific
function.” The parties dispute whether the construction should exclude “a utility or operating
system” from the meaning of application. Plaintiff argues that its construction eliminates the
confusing examples from the proposed construction. Docket No. 93 at 32. According to Plaintiff,
the examples included in Defendant’s construction are not supported by the claim language or the
specification of any of the patents-in-suit. Id.
Defendant responds that its construction is consistent with the specification and dictionary
definitions of “application.” Docket No. 98 at 33. Defendant further argues that the term
“application” cannot be any software that performs a specific function because the ’954 Patent
distinguishes “applications” from “operating systems,” and provides the same examples of
applications as set forth in its construction. Id. (citing ’954 Patent at 1:23–25, 1:27–37, 8:25–36,
4:35–38, Figure 1). Defendant contends that its construction will aid the jury’s understanding of
how the ’954 Patent uses the term “application.” Docket No. 98 at 34.
Plaintiff replies that Defendant invites confusion to the fact finders as the term
“application” is prevalent across all five patents. Docket No. 121 at 16. Plaintiff also argues that
the inclusion of alleged “examples” is an improper attempt by Defendant to read in restrictions to
the claim language that do not exist. Id. Plaintiff contends that “application” should be construed
to have its “plain and ordinary meaning,” or alternatively, be construed as “a software program
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that performs a specific function.” Id.
For the following reasons, the Court finds that the term “application” should be construed
to mean “a software program that performs a specific function. For example, a word
processor, a database program, a web browser, or an image-editing program.”
2. Analysis
The term “application” appears in asserted claim 14 of the ’954 Patent. The intrinsic
evidence indicates that the patentee distinguished between “applications” and an “operating
system.” The specification states that “FIG. 1 illustrates execution environment 102 including
operating system 120, one or more applications 122, and other program code and/or data
components illustrated by other libraries and subsystems 124.” ’954 Patent at 4:35–38. As shown
below, Figure 1 illustrates “applications 122” distinct from “operating system 120.” To the extent
that Plaintiff argues that “application” as used in claim 14 of the ’954 Patent may include only the
operating system, the Court rejects this argument.
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’954 Patent at Figure 1 (highlighted). Furthermore, the specification provides examples of
applications. The Background section describes the lack of “integration and/or cooperation
between or among applications used at the same time by a user.” ’954 Patent at 1:23–25. The
specification explains:
For example, documents often include both text and media such as images from
pictures, graphs, and drawings. Word processors provide rich feature sets for
creating and editing text, but provide relatively weak or no features for creating and
editing other forms of data. As a result, users work on text for a document in a word
processor, images in an image editor, and drawings using a drawing tool such as
a computer aided design (CAD) tool. Users spend significant time managing the
user interfaces of these various applications in order to access the data desired in
the application desired.
’954 Patent at 1:27–37 (emphasis added). In other examples, Figs. 4a and 4b illustrate web
browser 403b as an equivalent to an application 403a. The patent explains that “FIG. 4a illustrates
execution environment 401a hosting application 403a,” while “FIG. 4b illustrates execution
environment 401b hosting browser 403b.” Id. at 8:25–28 (emphasis added). The Court finds that
these examples will help clarify the term for the jury. Finally, in reaching its conclusion, the Court
has considered the extrinsic evidence submitted by the parties and gives it its proper weight in light
of the intrinsic evidence.
3. Court’s Construction
The term “application” should be construed to mean “a software program that performs
a specific function. For example, a word processor, a database program, a web browser, or
an image-editing program.”
H. “operating application(s)”
Disputed Term
“operating application(s)”
Plaintiff’s Proposal
(plain and ordinary meaning)
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Defendant’s Proposal
“active (i.e. running)
application”
1. The Parties’ Positions
The parties dispute whether “operating application(s)” should be construed to mean “active
(i.e. running) application,” as Defendant contends. Plaintiff argues that nothing is gained by
replacing “operating application” with “active (i.e. running) application.” Docket No. 93 at 24.
Plaintiff contends that adopting Defendant’s position would be an advisory opinion because the
parties don’t have an actual dispute. Id. Plaintiff also argues that there are other unasserted claims
that have the same disputed term “operating application” or variations of the term “operating” such
as “operable.” Id. (citing ’361 Patent at claims 69, 70, 71, 72, 73, 74, 82, 83, 84, 85). According
to Plaintiff, the patentee is making a distinction between an operable computer program product
and one that is not. Docket No. 93 at 25. Finally, Plaintiff contends that the specification states
that more than one application can be operating at the same time. Id. (citing ’361 Patent at 12:19–
23, 1:57–58, 12:54–57).
Defendant responds that its construction follows directly from the patentee’s stated
objective of reducing “cluttered desktops on desktop, notebook, and handheld devices.” Docket
No. 98 at 32 (citing ’361 Patent at 1:7–21, 1:38–42). Defendant argues that in order for these
applications to “clutter” a desktop, the applications must necessarily be running (i.e., active).
Docket No. 98 at 32. Defendant contends that the extrinsic evidence confirms its construction. Id.
(citing Docket Nos. 98-9 at 2; 98-10 at 2). Defendant also argues that the terms “operating” and
“operable” are different terms used in different contexts in different claims, and the construction
of one does not affect the construction of the other. Docket No. 98 at 33.
Plaintiff replies that nothing is gained by replacing “operating application” with “active
(i.e. running) application.” Docket No. 121 at 12. Plaintiff also argues that the inclusion of the
term “i.e.” is confusing. Id. Plaintiff further contends that Defendant never states it does not
understand the meaning of “operating” when read in the context of claim 17. Id.
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For the following reasons, the Court finds that the term “operating application(s)” should
be given its plain and ordinary meaning.
2. Analysis
The term “operating application(s)” appears in asserted claim 17 of the ’361 Patent. The
Court finds that the term should be given it plain and ordinary meaning because Defendant has not
provided a persuasive reason for replacing “operating” with “active (i.e. running).” The only
support for Defendant’s construction is extrinsic dictionary definitions. Docket No. 98 at 32.
Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in
determining how to read claim terms.” Phillips, 415 F.3d at 1318.
Moreover, the intrinsic evidence cited by Defendant uses the term “operating,” and not
active. For example, the disclosed system addresses the stated issue by providing a system “for
navigating between visual components” by “detecting . . . a first visual component of a first
operating application in a plurality of operating applications.” ’361 Patent at 1:38-42. The claim
language is not overly technical or confusing. Thus, the Court finds that the term does not require
construction, because it is unambiguous, and is easily understandable by a jury, and should be
given its plain and ordinary meaning. Moreover, the Court is not persuaded that it should redraft
the claim to replace a term in the specification with one that is not, particularly when doing so
would not provide any additional clarity. Finally, in reaching its conclusion, the Court has
considered the extrinsic evidence submitted by the parties and gives it its proper weight in light of
the intrinsic evidence.
3. Court’s Construction
The term “operating application(s)” will be given its plain and ordinary meaning.
I. “detection of a first (second/third) user input”
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Disputed Term
“detection of a first
(second/third) user input”
Plaintiff’s Proposal
(plain and ordinary meaning)
Defendant’s Proposal
“detecting user activation of
a touch screen input”
1. The Parties’ Positions
The parties dispute whether the recited “detections” must be from a user activating the
recited touchscreen. Plaintiff argues that Defendant is attempting to read into the claim a limitation
that the input must be from a touchscreen. Docket No. 93 at 32. Plaintiff contends that the
specification supports its position that plain and ordinary meaning applies to these three additional
disputed claim terms. Id. at 33.
Defendant replies that Plaintiff asserts that this limitation somehow does not require the
input to be from a touchscreen. Docket No. 98 at 35. Defendant contends that Plaintiff’s position
would read out an express limitation of claim 14. Id. (citing ’954 Patent at 27:45–63). According
to Defendant, the claim language makes clear that “detection of a first (second/third) user input”
requires a touchscreen input. Docket No. 98 at 35.
Plaintiff replies that the patentee knew how to include a touchscreen limitation and did so
in other elements. Docket No. 121 at 16 (citing ’954 Patent at claim 19). Plaintiff further contends
that Defendant’s construction violates the cannon of claim differentiation. Docket No. 121 at 17.
According to Plaintiff, Defendant improperly glosses over the claim language in such a way that
it is dangerous to the interpretation of non-asserted claims. Id. (citing ’954 Patent at claims 1-20).
For the following reasons, the Court finds that the phrase “detection of a first
(second/third) user input” should be given its plain and ordinary meaning.
2. Analysis
The phrase “detection of a first (second/third) user input” appears in asserted claim 14 of
the ’954 Patent. The intrinsic evidence indicates that the “detection of a user input” in claim 14
should not be limited to a “touch screen input.” Claim 14 only recites that the “presentation” of
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the respective window is by “utilizing the touchscreen,” it does not recite that the “detection” is
by “utilizing the touchscreen.” The lack of the “touchscreen” language in the “detection” element
is significant because the specification includes embodiments that explicitly state that both the
“detection” and “presentation” are by “utilizing the touchscreen.” For example, the specification
states “detecting, utilizing the touchscreen, a first user input in connection with the first application
interface element associated with the first application; in response to the first user input,
presenting, utilizing the touchscreen, a first visual component for presenting first data associated
with the first application.” ’954 Patent at 1:61–66 (emphasis added). Thus, the patentee knew how
to claim “utilizing the touchscreen” for detecting, but choose not do so in claim 14.
The specification further states that the user may provide input via a mouse or a pointing
device, and not just a touchscreen. ’954 Patent at 11:9–11 (“A user may provide an input detected
by the mouse.”), id. at 23:39–42 (“[A] location of a visual component may be changed in response
to a dragging and dropping operation detected by a pointing and/or touch input device.”).
Consistent with the “presentation” limitation in claim 14, the specification also indicates that the
touch screen may be an output device. Id. at 5:22–24 (“In some embodiments, an input device
may also include an output device. Examples include a phone, a joystick, and/or a touch screen.”).
Thus, including “a touchscreen” in claim 14 does not automatically imply that it must be for
“detection.” Indeed, here claim 14 only recites that the touchscreen is in connection with
“presentation” (i.e., acting as an output device). Accordingly, the Court rejects Defendant’s
construction because it would improperly read a limitation into the claim. Detection is not limited
to a touch screen input.
3. Court’s Construction
The phrase “detection of a first (second/third) user input” will be given its plain and
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ordinary meaning.
J. The “Instructions To” Phrase In The ’361 Patent
Disputed Term
Plaintiff’s Proposal
“Instructions to . . . cause Not subject to § 112, ¶ 6.
a change in presentation
(plain and ordinary meaning)
focus, by: pausing the
presentation of the first
media stream via the first
presentation device
utilizing the first media
player, and presenting a
second media stream via
the first presentation
device utilizing the second
media player”
Defendant’s Proposal
Subject to § 112, ¶ 6.
Function: “detecting access
to the first media player to
play a first media stream that
includes video”
Structure: none
1. The Parties’ Positions
The parties dispute whether the phrase “instruction to . . .” is subject to § 112, ¶ 6. Plaintiff
argues that Defendant ignores the claim language that provides the physical structure for
completing the “instructions.” Docket No. 93 at 17. Plaintiff also contends that the recited
presentation device with memory, touchscreen, and one or more processors to execute the
instructions also provides sufficient structure. Id. Operating under the assumption that § 112, ¶ 6
does not apply, Plaintiff contends that no further construction is required. Id.
Defendant responds that the term “instructions to” does not convey any definite structure
to a POSITA. Docket No. 98 at 20 (citing Docket No. 102-1 at ¶¶ 113-16). Defendant argues that
instructions describe generic software rather than structure for performing the claimed
functionality. Docket No. 98 at 20 (citing Docket No. 98-5 at 5; Docket No. 98-3 at 7). According
to Defendant, “instructions to” serves as a generic placeholder for software without providing any
structural detail as how the system will accomplish the recited function. Docket No. 98 at 21.
Defendant further contends that a generic “processor to execute instructions” cannot supply the
structure. Id. Defendant argues that Plaintiff failed to identify any corresponding algorithm in the
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’558 Patent. Id. According to Defendant, claim 14 is invalid as indefinite. Id.
Plaintiff replies that claim 14 recites “instructions to” followed by various functions.
Docket No. 121 at 8. Plaintiff argues that Defendant’s expert mischaracterizes the claim language
by omitting the surrounding claim language, which recites the objective and operation of the
“instructions.” Id. Plaintiff argues that the claim language recites the “instructions” interaction
with the other instructions and structures in the claim. Id. According to Plaintiff, Defendant “skips
right over any analysis of the disputed claim term in the context of the claim language altogether.”
Id. at 9.
For the following reasons, the Court finds that the phrase “Instructions to . . .” is not
governed by 35 U.S.C. § 112, ¶ 6, and should be given its plain and ordinary meaning.
2. Analysis
The phrase “instructions to . . . ” appears in asserted claim 14 of the ’558 Patent. The Court
further finds that the phrase is not subject to § 112 ¶ 6.
a. Determining Whether the “Instructions To” Phrase is a MeansPlus-Function Term
Here, there is a rebuttable presumption that § 112, ¶ 6 does not apply because the claim
does not recite the word “means.” Therefore, the analysis proceeds in two steps.7 Starting with
the first step, Defendant argues that the term “instruction to” does not convey any definite structure
to a POSITA that could be used to perform the function. Docket No. 102-1 at ¶¶ 22-24, 106-109.
The Court disagrees and finds that Defendant has conflated the steps in the § 112, ¶ 6 analysis.
Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298-1299 (Fed. Cir. 2014) (“Requiring traditional
physical structure in software limitations lacking the term means would result in all of these
7
The applicable law relating to the determination and construction of means-plus-function terms
is included in the Analysis Section of “The Disputed ‘Code For’ Terms in The ’361 Patent.”
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limitations being construed as means-plus-function limitations and subsequently being found
indefinite.”); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-09 (Fed. Cir. 2018) (holding that
the district court erred by effectively treating “program” and “user interface code” as nonce words
and concluding in turn that the claims recited means-plus-function limitations.).
In contrast to the claims in Williamson, the claim language here does not describe broadly
phrased high-level functions such as “receiving communications” or “coordinating the operation
of the streaming data module.” Williamson, 792 F.3d at 1344. Instead, the claim describes the
objectives and operations of the processor programmed to execute the recited “instructions.” In
other words, the claim language provides a description of how the processor is specifically
programmed to operate. For example, the processor is programmed to execute the instructions to
“simultaneously present a first media player and a second media player, where the first media
player is presented with at least one first input control and the second media player is presented
with at least one second input control, the at least one first input control and the at least one second
input control each including at least one of a play input control or a pause input control.” The
processor is also programmed to execute the instructions to “detect a selection of the at least one
first input control presented with the first media player,” and “in response to the detection of the
selection of the at least one first input control presented with the first media player, present a first
media stream via the first presentation device utilizing the first media player.”
Claim 14 further recites that the processor is also programmed to execute the instructions
to “detect, while the first media stream is being presented via the first presentation device utilizing
the first media player, a selection of the at least one second input control presented with the second
media player,” and “in response to the detection of the selection of the at least one second input
control presented with the second media player while the first media stream is being presented via
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the first presentation device utilizing the first media player, cause a change in presentation focus,
by: pausing the presentation of the first media stream via the first presentation device utilizing the
first media player, and presenting a second media stream via the first presentation device utilizing
the second media player.” Claim 14 further describes the structural interactions of the “instructions
to” and the first and second presentation device: “wherein the first presentation device is
configured such that the change in presentation focus results from at least one of: a releasing of a
first presentation focus in connection with the first media player, a detected user input indication
for giving the second media player a second presentation focus, a change in input focus, a change
in an attribute of a user interface element, a count of media streams being played, a ranking of
media streams being played, a transparency level of at least one of the user interface element, or
another user interface element sharing a region of a display of the first presentation device.”
Thus, a person of ordinary skill in the art would understand that the claim language recites
sufficient structure, and that the term “instructions to . . .” is not used as a generic term or black
box recitations of structure or abstractions. Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007-09
(Fed. Cir. 2018) (“a person of ordinary skill in the art could reasonably discern from the claim
language that the words ‘program,’ . . . and ‘user interface code,’ . . . are used not as generic terms
or black box recitations of structure or abstractions, but rather as specific references to
conventional graphical user interface programs or code, existing in prior art at the time of the
inventions.”) (emphasis added). By attempting to focus on one isolated aspect of the “instruction
to,” Defendant ignores the surrounding claim language and the context of the structure disclosed
in the claim.
Defendant also contends that by associating the term with a variety of different functions,
the claims demonstrate that term is a generic term rather than a definite structure for performing a
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specific function. Docket No. 98 at 10. The Court disagrees. Requiring the patent to describe
precisely how the claimed functions are achieved or how a person of ordinary skill in the art could
make and use the invention goes beyond the threshold trigger for the application of § 112, ¶ 6.
Defendant’s argument here is more in the nature of enablement or disclosure of corresponding
structure where it has already been determined that a term is a means-plus-function limitation, not
the threshold question whether § 112 ¶ 6 applies in the first place. Aristocrat Techs. Australia Pty
Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1336 (Fed. Cir. 2008) (in evaluating a claim that was a
means-plus-function limitation, stating that “[w]hether the disclosure would enable one of ordinary
skill in the art to make and use the invention is not at issue here”; “[e]nablement of a device requires
only the disclosure of sufficient information so that a person of ordinary skill in the art could make
and use the device” while “[a] section 112 paragraph 6 disclosure . . . serves the very different
purpose of limiting the scope of the claim to the particular structure disclosed, together with
equivalents”).
It is true that when a limitation is a means-plus-function limitation, and the corresponding
structure is software, there must be an algorithm for the software or else the means-plus-function
limitation will be considered indefinite unless the function can be performed by a general purpose
computer. See Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (holding
that the corresponding disclosure for a computer-implemented means-plus-function claim is an
algorithm). But that authority is not on point because that definiteness analysis is triggered only
where the limitation is a means-plus-function limitation.
In summary, although the presumption against § 112 ¶ 6 is no longer “strong,” it is still a
presumption that Defendant must affirmatively overcome. In the context of the intrinsic record
for the ’558 Patent, the Court finds that Defendant has not shown that “instructions to” should be
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subject to § 112, ¶ 6. Accordingly, the Court reject Defendant’s argument that the phrase
“instructions to . . .” is a means-plus-function term governed by § 112, ¶ 6, and finds that no further
construction is required. Finally, in reaching its conclusion, the Court has considered the extrinsic
evidence submitted by the parties and gives it its proper weight in light of the intrinsic evidence.
3. Court’s Construction
In light of the evidence, the Court finds that the phrase “wherein the one or more
processors execute the instructions to: simultaneously present a first media player and a
second media player, where the first media player is presented with at least one first input
control and the second media player is presented with at least one second input control, the
at least one first input control and the at least one second input control each including at
least one of a play input control or a pause input control; detect a selection of the at least one
first input control presented with the first media player; in response to the detection of the
selection of the at least one first input control presented with the first media player, present
a first media stream via the first presentation device utilizing the first media player; detect,
while the first media stream is being presented via the first presentation device utilizing the
first media player, a selection of the at least one second input control presented with the
second media player; in response to the detection of the selection of the at least one second
input control presented with the second media player while the first media stream is being
presented via the first presentation device utilizing the first media player, cause a change in
presentation focus, by: pausing the presentation of the first media stream via the first
presentation device utilizing the first media player, and presenting a second media stream
via the first presentation device utilizing the second media player; wherein the first
presentation device is configured such that the change in presentation focus results from at
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least one of: a releasing of a first presentation focus in connection with the first media player,
a detected user input indication for giving the second media player a second presentation
focus, a change in input focus, a change in an attribute of a user interface element, a count
of media streams being played, a ranking of media streams being played, a transparency
level of at least one of the user interface element, or another user interface element sharing
a region of a display of the first presentation device.” is not governed by 35 U.S.C. § 112, ¶ 6,
and will be given its plain and ordinary meaning.
VI.
.
CONCLUSION
The Court adopts the constructions above for the disputed and agreed terms of the Asserted
Patents. Furthermore, the parties should ensure that all testimony relates to the terms addressed in
this Order is constrained by the Court’s reasoning. However, in the presence of the jury the parties
should not expressly or implicitly refer to each other’s claim construction positions and should not
expressly refer to any portion of this Order that is not an actual construction adopted by the Court.
The references to the claim construction process should be limited to informing the jury of the
constructions adopted by the Court.
SIGNED this 23rd day of August, 2018.
____________________________________
ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE
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