Absolute Software, Inc. et al v. World Computer Security Corporation et al

Filing 159

MEMORANDUM OPINION AND ORDER: the court construes the claims as noted and so ORDERS. No further claim terms require construction; Scheduling Conference set for 3/26/2014 at 9:30 AM before Judge Lee Yeakel. Signed by Judge Lee Yeakel. (kkc)

a

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS

2O1FEB6 PM12:3

AUSTIN DIVISION
CLE'.
WESTE

ABSOLUTE SOFTWARE, INC. AND
ABSOLUTE SOFTWARE CORP.,
PLAINTIFFS,

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a

(_
crT

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§

V.

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WORLD COMPUTER SECURITY CORP.
AND FRONT DOOR SOFTWARE CORP.,

§

CIVIL ACTION NO. A-09-CV-142-LY

§
§

DEFENDANTS.

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§
§

MEMORANDUM OPINION AND ORDER
ON CLAIM CONSTRUCTION
Before the court are the parties' Second Amended Joint Claim Construction Statement filed

November 2, 2010 (Clerk's Doe. No. 125); Plaintiffs Absolute Software, Inc. and Absolute Software

Corp.'s (collectively, "Plaintiffs") Opening Claim Construction Brief filed March 29, 2010 (Clerk's
Doe. No. 65); Defendants Clear World Computer Security Corp. and Front Door Software Corp.'s

(collectively, "Defendants") Opening Claim Construction Brief filed March 29, 2010 (Clerk's Doc.
No. 64); Plaintiffs' Responsive Claim Construction Brief filed April 26,2010 (Clerk's Doe. No. 75);

Defendants' Responsive Claim Construction Brief filed April 26, 2010 (Clerk's Doe. No. 77);

Plaintiffs' Reply Claim Construction Brief filed May 12, 2010 (Clerk's Doe. No. 86); Defendants'
Amended Reply to Defendants' Opening Claim Construction Brief filed May 12,2010 (Clerk's Doe.
No. 89); Plaintiffs' Supplemental Claim Construction Brief filed October 8, 2010 (Clerk's Doe. No.
117); Defendants' Supplemental Claim Construction Brief filed October 8, 2010 (Clerk's Doe. No.
116); and the parties' claim-construction presentations.

TXA3

The court held a claim-construction hearing on November 22, 2010. See Markman

v.

Westview Instruments, Inc., 52 F.3d 967,976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).

After considering the patent and its prosecution history, the parties' claim-construction briefs, the
applicable law regarding claim construction, and argument of counsel, the court now renders its
order with regard to claim construction.

Introduction

I.

The court renders this memorandum opinion and order to construe the claims of the patentsin-suit in this cause, U.S. Patent No. 6,244,758 ("the '758 Patent") and U.S. Patent No. 6,300,863
("the '863 Patent"). The asserted patents generally relate to an apparatus and method for tracing and

locating electronic devices via a global network, such as the Internet)

Both the '758 Patent and the '863 Patent were asserted in the matter of Absolute Software,
Inc.

v.

Stealth Signal, Inc. et al., No. H-05-1416 (S.D. Tex. 2008), brought in the United States

District Court for the Southern District of Texas. That court issued an Order on Claim Construction
on June 17, 2009 in which Judge Werlein accepted a Report and Recommendation by a special
master, construing in part the first two disputed claims in this action. Although not binding on this
court, the reasoning and constructions from Stealth are discussed where appropriate. On July 21,

2010, Judge Werlein signed an order dismissing all causes of action in the Stealth matter.

During the pendency of this action, Defendants requested the United States Patent and Trademark
Office (PTO) to reexamine the '863 Patent, and requested this court to stay all proceedings, pending
the outcome of the reexamination. The court denied a formal stay, but deferred determining claims
construction for what this court deemed a reasonable amount of time for the PTO to conduct a
reexamination. Although Defendants apparently filed their request for reexamination in December
2010, the PTO had not completed action on the request as of the time of a conference call the court
conducted with the parties on January 15, 2014, over three years after the request was filed. The
court will now proceed forward with this case.
2

II.

Legal Principles of Claim Construction
Determining infringement is a two-step process. See Markman, 52 F.3d at 976 ("[There are]

two elements of a simple patent case, construing the patent and determining whether infringement

occurred .

.

.

."). First, the meaning and scope of the relevant claims must be ascertained. Id.

Second, the properly construed claims must be compared to the accused device. Id. Step one, claim

construction, is the current issue before the court.
The court construes patent claims without the aid of ajury. See Markman 52 F.3d at 979.
The "words of a claim 'are generally given their ordinary and customary meaning." Phillips
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp.

v.

v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The 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. Id. at 1313. The person of ordinary skill in the art is deemed
to have read the claim term in the context of the entire patent. Id. Therefore, to ascertain the

meaning of claims, courts must look to the claims, the specification, and the patent's prosecution
history. Id. at 13 14-17; Markman, 52 F.3d at 979.
Claim language guides the court's construction of claim terms. Phillips, 415 F.3d at 1314
"[T}he context in which a term is used in the asserted claim can be highly instructive." Id. Other

claims, asserted and unasserted, can provide additional instruction because "terms are normally used

consistently throughout the patent." Id. Differences among claims, such as additional limitations
in dependent claims, can provide further guidance. Id.

Claims must also be read "in view of the specification, of which they are a part." Markman,
52 F.3d at 979. The specification "is always highly relevant to the claim construction analysis.

3

Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Teleflex, Inc.
v.

Ficosa N Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002) (internal citations omitted). In the

specification, a patentee may define a term to have a meaning that differs from the meaning that the

term would otherwise possess.

Phillips, 415 F.3d at 1316.

In such cases, the patentee's

lexicography governs. Id. The specification may also reveal a patentee's intent to disclaim or
disavow claim scope. Id. Such intentions are dispositive for claim construction. Id. Although the
specification may indicate that certain embodiments are preferred, particular embodiments appearing
in the specification will not be read into the claims when the claim language is broader than the

embodiment. Electro Med. Sys., S.A.

v.

CooperLfeScis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

The prosecution history is another tool to supply the proper context for claim construction

because it demonstrates how the inventor understood the invention. Phillips, 415 F.3d at 1317. A
patentee may serve as his own lexicographer and define a disputed term in prosecuting a patent.
Home Diags., Inc.

v.

LfeScan, Inc., 381 F.3d 1352, 1356 (Fed.Cir.2004). Similarly, distinguishing

the claimed invention over the prior art during prosecution indicates what the claims do not cover.
Spectrum Int'l

v.

Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed.Cir.1988). The doctrine of

prosecution disclaimer precludes patentees from recapturing specific meanings that were previously
disclaimed during prosecution.

Omega Eng'g, Inc.

v.

Raytek Corp., 334 F.3d 1314, 1323

(Fed.Cir.2003). Disclaimers of claim scope must be clear and unambiguous. Middleton, Inc.

v.

3M

Co., 311 F.3d 1384, 1388 (Fed.Cir.2002).

Although, "less significant than the intrinsic record in determining the legally operative

meaning of claim language," the court may rely on extrinsic evidence to "shed useful light on the
relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises

may help the court understand the underlying technology and the manner in which one skilled in the
art might use claim terms, but such sources may also provide overly broad definitions or may not be

indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the
court in determining the particular meaning of a term in the pertinent field, but "conclusory,

unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally,
extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to
read claim terms." Id. Extrinsic evidence may be useful when considered in the context of the
intrinsic evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis

of the intrinsic evidence," On-Line Techs., Inc.
1133, 1139 (Fed. Cir. 2004).

v.

Bodenseewerk Perkin-Elmer GmbH, 386 F.3d

III.

Discussion

A.

Agreed Constructions

Prior to the claims-construction hearing, the parties agreed to the construction of three claim
terms. The following table summarizes the parties' agreement. The court hereby adopts the agreed

construction of all claim terms as listed below.

Claim Term/Phrase

Adopted Agreed

"identifying indicia"

information that indicates the identity of the electronic device,
whether or not this information also indicates the identity of
the agent

('758 Patent, Claim 72;
'863 Patent, Claim 1)
"global network"

Construction2

the Internet; the telephone network is not a global network,
but the internet includes and uses the telephone network

('863 Patent, Claim 1)
"automatically"

('863 Patent, Claim 1)

2

acting or operating in a manner essentially independent of
external influence or control; this action or operation may be
triggered by some external event, but such a triggering event
must not involve a human command directing the action or
operation

Throughout, the bolded terms indicate the court's adopted construction.

B.

Disputed Terms

The parties dispute the construction of four terms. The following table summarizes the

parties' proposed constructions of the disputed terms.
Claim TermfPhrase

Plaintiffs' Proposed Construction

Defendants' Proposed Construction

"one or more of the
1
ne tw o rk
communication links used
to enable transmission
between said electronic
device and said host
system, said transmission
via said communication
linksusedfordetermining
the location of said
electronic device"

"the identification of one or more
(perhaps less than all) of the nodes in
the Internet (one of the nodes may be
the electronic device itself) used to
enable data transmission between said

"The identification of one or more (perhaps less than all) of the IP
addresses of the routers and nodes which define the connections
(either direct or indirect) between two nodes in the Internet (one of
the nodes may be the electronic device itself) used to enable data
transmission between said electronic device and said host system; a
plurality of IP addresses of some of the routers of the
communication links between the host and the electronic device
must be used to determine the location of the electronic device,
without using any triangulation methodology, without using any
geometrical tracking, without using any GPS, without using any
dead reckoning. In the internet application, the agent initiates a
traceroute routine which provides the host with the Internet
communication links that were used to connect the client computer
to the host. These Internet communication links will assist the host
system in tracking the client computer. The IP address of the source
of the DNS query is sent to the host within the DNS query.
However, if the source of the query is transmitted through a 'proxy'
server, then the IP address of the client computer(which may not be
unique since it may not have been assigned by the InterNiC) will
likely be insufficient to track the location of the client computer. In
such a scenario, it is necessary to determine the addresses of other
IP routers which were accessed to enable communication between
the client and the host. These addresses and the times that they were
accessed are compared with internal logs of the proxy server which
record its clients' Internet access history. In this way, the client can
be uniquely identified and located. A traceroute is performed by
doing multiple pings from the computer to the host Internet
monitoring subsystem. The TTL field is incremented from one for
each ping. The first ping is sent with a TTL value ofone. It will fail
at the first route and the first router address will be determined since
the IP packet which will indicate the address of the first router will
be returned to the source (client) computer. The second ping will
then be sent with a TTL value of two, If this call fails, then the
second router address will be determined. This process is continued
until the plug succeeds. By saving each router address, a trail of
routers, linking the client computer with host Internet monitoring
subsystem is created. This route, representing the sequence of
Internet communication links between the computer and the host, is
then transmitted to the host Internet monitoring subsystem which
saves this information on disk; in the case where the transmission is
over a public switched telephone network (PSTN), the Caller ID
may provide the location of said electronic device."

1.

g o ba
1

('863 Patent, Claim

1)

electronicdeviceandsaidhostsystem;
the transmissionbetween the electronic
device and said host system is used to
determine the location of said
electronic device."

2. "one or more of the

Internet communication
links used to enable
transmission between said
electronic device and said

"the identification of one or more
(perhaps less than all) of the nodes in
the Internet (one of the nodes may be
the electronic device itself) used to
enable data transmission between said

3. "agent"

[No construction necessary]

"The identification of one or more (perhaps less than all) of the IP
addresses of the routers and nodes which define the connections
(either direct or indirect) between two nodes in the Internet (one of
the nodes may be the electronic device itself) used to enable data
transmission between said electronic device and said host system; a
host system, said electronicdeviceandsaidhostsystem; plurality of IP addresses of some of the routers of the
communicationlinks used one or more of the provided Internet communication links between the host and the electronic device
for determining the communication links must be used to must be used to determine the location of the electronic device,
location of said electronic determine the location of said without using any triangulation methodology, without using any
device"
electronic device."
geometrical tracking, without using any GPS, without using any
dead reckoning. In the internet application, the agent initiates a
('758 Patent, Claim 72)
traceroute routine which provides the host with the Internet
communication links that were used to connect the client computer
to the host. These Internet communication links will assist the host
system in tracking the client computer. The IP address of the source
of the DNS query is sent to the host within the DNS query.
However, ifthe source of the query is transmitted through a 'proxy"
server, then the IP address of the client computer (which may not be
unique since it may not have been assigned by the InterNIC) will
likely be insufficient to track the location of the client computer. In
such a scenario, it is necessary to determine the addresses of other
IP routers which were accessed to enable communication between
the client and the host. These addresses and the times that they were
accessed are compared with internal logs of the proxy server which
record its clients' Internet access history. In this way, the client can
be uniquely identified and located. A traceroute is performed by
doing multiple pings from the computer to the host Internet
monitoring subsystem. The TTL field is incremented from one for
each ping. The first ping is sent with a TTL value ofone. It will fail
at the first route and the first router address will be determined since
the IP packet which will indicate the address of the first router will
be returned to the source (client) computer. The second ping will
then be sent with a TTL value of two. If this call fails, then the
second router address will be determined. This process is continued
until the plug succeeds. By saving each router address, a trail of
routers, linking the client computer with host Internet monitoring
subsystem is created. This route, representing the sequence of
Internet communication links between the computer and the host, is
then transmitted to the host Internet monitoring subsystem which
saves this information on disk; in the case where the transmission is
over a public switched telephone network (PSTN), the Caller ID
may provide the location of said electronic device."

('758 Patent, Claim 72;
'863 Patent, Claim 1)

"throughout the entire operation of the agent residing in the
computer (including a remote laptop), all signals between the agent
Or, if construed:
and the host are transparent (hidden, stealth, not noticeable) to the
"software, firmware, or hardware user through either the screen or the speaker on the computer, the
programmed with a predefined task set user has no idea the agent is present"
installed on a device to be protected"

4. "location"

[No construction necessary]

('758 Patent, Claim 72;

Or, if construed:
"physical location"

'863 Patent, Claim 1)

"accurate enough location of the electronic device to enable a
person to go and retrieve the electronic device"

1.

"one or more of the global network communication links used to enable transmission between

said electronic device and said host system, said transmission via said communication links used for

determining the location of said electronic device"
As a preliminary matter, the court notes that a large portion of Defendants' proposed

construction is seeking to improperly limit the claim from language used in the specification.
Specifically, after the first sentence ofDefendants' proposed construction, Defendants, in 356 words,

explain in detail an embodiment from the specification, limiting the claim to use of a traceroute
routine and including a number of procedural steps that are in no way supported by the claim
language, nor by other intrinsic evidence. As Plaintiffs point out, a traceroute routine requires use

of all communication links, and thus limiting the claim to a traceroute routine would contradict the
plain language of the claim, which allows for providing "one or more" of the communication links.
In addition, Claim 9 of the '863 Patent, a dependent claim, protects "the method of claim 2 wherein

said step of providing said host system with said one or more of the Internet communication links
is accomplished using a traceroute routine." Patent '863, 34:7-9, As Claim 2 is dependent on and

narrower than Claim 1, Claim 9 is dependent on and narrower than Claim
limitation added to Claim 9 cannot be imported to Claim

1.

SRI mt

'1

v.

1.

And the specific

Matsushita Elec. Corp. of

Am., 775 F.2d 1107, 1122 (Fed. Cir. 1985) ("It is settled law that when a patent claim does not

contain a certain limitation and another claim does, that limitation cannot be read into the former
claim in determining either validity or infringement."). Moreover, the process described in

Defendants' proposed construction limits the claim to using IP addresses as the only way to identify
the nodes, a construction which excludes the preferred embodiment of using a MAC address to

identify the nodes.

Defendants support their construction by citing the '863 Patent's specification and its
discussion of the traceroute process, but never point the court to any evidence that the patentee
demonstrated a clear intention to limit the claim scope using words or expressions of manifest

inclusion or restriction. Liebel-Flarsheim Co.

v.

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)

(holding that even when the specification describes only a single embodiment, the claims of the

patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit
the claim scope using words or expressions of manifest exclusion or restriction). Defendants do not

argue that any such clear intention exists, but appear to argue that the court should construe the claim
to be limited to the specific embodiments from the specification to which Defendants point. As this

is contrary to the law of claim construction, the court will decline to do so. See Philips, 415 F.3d
at 1319-20 (stating that it is improper to import limitations from the specification into the claims);
see also Wilson Sporting Goods Co.

v.

Hillerich & Bradsby Co., 442 F.3d 1322, 1330-31 (Fed. Cir.

2006) ("This court, of course, repeats its rule that 'claims may not be construed with reference to the

accused device'.

. .

the rule forbids a court from tailoring a claim construction to fit the dimensions

of the accused product or process.

. .

it forbids biasing the claim construction process to exclude or

include specific features of the accused product or process.")

Comparing Plaintiffs' proposed construction with the first sentence of Defendants' proposed
construction, there are two main points of contention between the parties: (1) the meaning of

"communication links" within the

Internet3

and (2) whether the file history of the '863 Patent

affirmatively excludes certain methods of locating an electronic device.

The parties have agreed that "global network" means the Internet.

10

As to the first issue, Plaintiffs propose that communication links refer to "nodes" in the
Internet. Defendants proposed construction suggests it means "IP addresses of the routers and nodes

which define the connections between two nodes in the Internet."
The special master in Stealth, after examining both the '758 and '863 Patents, found that

neither "node" nor "IP address of a router" was an appropriate definition for the phrase

"communication link." See Absolute Software, Inc.

v.

Stealth Signal, Inc. et al., No. H-05-1416

(S.D. Tex. Feb. 8, 2008) (report and recommendation on claim construction). The '863 specification

refers to the act of a node "establishing a communication link" to another node. '863 Patent, Column
12, Lines 59-61 (stating that the agent "establishes a communication link to the Host [and] and sends

its identity"). In this context, substituting "IP address of a router" does not make sense: the agent

cannot "establish an IP router to the host." This reasoning also applies against Plaintiffs' argument

that communication links should be defined as nodes: the agent cannot "establish a node to the host."
In addition, the special master pointed out that Figure

1

in both the '758 and '863 Patent

specifications depict examples of "communication links" which cannot be IP addresses of routers
or nodes. The specifications both describe L9 as a "communication link" and L8 and L9 as "links."
See '758 Patent, Column 5, Lines 5 1-52, Column 6, Line

65Column

7, Line 1; '863 Patent,

Column 7, Lines 12-13, Column 8, Lines 27-29. As seen in Figure 1, reproduced below, L8 and
L9 are both shown as lines depicting the connection between two nodes, not as the nodes themselves,

and not as an IP address of a router. The court agrees with the reasoning of Stealth, and finds that
the definition of "communication link" is "any connection (either direct or indirect) used for data

transmission between two nodes in the Internet." Accordingly, the first part of the term will be
construed as: "the identification of one or more (perhaps less than all) of the connections (either

11

direct or indirect) between two nodes in the Internet (one of the nodes may be the electronic device
itself) used to enable data transmission between said electronic device and said host system."

As to the construction of the second part of the claim phrase, "said transmission via said
communication links used for determining the location of said electronic device," Plaintiffs propose

Agent implanted via hardware, software, firmware
as ROAd, Flash ROIl, EPROA1, microprocessor)
Al
A2
"Agent"
A

7

implanted."
Ion "Client"

L8

Device

Electronic Device
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\

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(work

L2

I

L5-ra7

L3
\

P.1

ne Line

L7

L 6.

Satellite
Radio Tower

(PSTN)

Cable Network

Tel 2hone Line

Internet

Telephone Lin
Cable

Provider

Link

S

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\

Public Switched
Telephone Network

Internet

Telecom

84
j__-

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munnication

L4

Gable

Modem

Leased

The

\

r Cl
Automatic Number Identification Satellite Dish
Identifying
Dialed Number Identification
and
Filtering

f-c
"Host"

Processing,
Auditing
and
Communication

3

Monitoring
System

Computer

Email

N2

>

/

Pho,

N4
-L

C2

1

Notify
Owners

CJ

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Owner

FIG.

1

12

"the transmission between the electronic device and said host system is used to determine the
location of said electronic device" while Defendants, in the relevant part of their proposed

construction, propose "a plurality of IP addresses of some of the routers of the communication links
between the host and the electronic device must be used to determine the location of the electronic
device, without using any triangulation methodology, without using any geometrical tracking,

without using any GPS, without using any dead reckoning."

Plaintiffs' construction is a straightforward definition of the claim language.

The

transmission, described in the first phrase of the claim ("said transmission via said communication
links"), is used to determine the location of the electronic device referred to in the first phrase ("said
electronic device"). Defendants' construction is based on the file history of the claim. Specifically,

in response to the examiner's initial rejection of Claim 1 as being obvious over prior art, Plaintiffs
amended Claim

1

to include the "said transmission via" language and submitted a response to office

action distinguishing the invention from prior art, stating, in part:
In contrast, the present invention determines the location of the
electronic device by relying on the transmission characteristic via the
communication links, not triangulated location data that must first be
collected and then transmitted to the monitoring computer as in the
case of [the prior art]. The transmission of such triangulation data in
and of itself does not provide information on the location. . . . Such
location information is provided by the transmitted data instead.

Defendants contend that this representation requires that the claim be construed to include the
affirmative limitation that the claim does not include use of any triangulation methodology, any
geometrical tracking, any GPS, or any dead reckoning.
Plaintiffs argue that this is a misapplication of patent law. The disputed claim term comes
from a method claim that includes the term "comprising":

13

A method for tracing an electronic device having an agent initiating
communication and providing identifying indicia to a host system, said electronic
device connectable to said host system through a global network, said method
comprising the steps of

automatically providing said host system with said identifying indicia through
said global network for determining the identity of said electronic device; and

providing said host system with one or more global network communication
links used to enable transmission between said electronic device and said host
system, said transmission via said communication links used for determining the
location of said electronic device.
'863 Patent, Claim

1

(emphasis added). Accordingly, Plaintiffs argue, infringement occurs when

a method includes these steps, but is not limited to methods that also include additional, unrecited
elements or steps. See Invitrogen Corp.

v.

BiocrestMfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003)

("The transition 'comprising' in a method claim indicates that the claim is open-ended and allows
for additional steps"); see also Medichem, S.A.

v.

Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003).

The court agrees with Plaintiffs. Although the file history distinguished inventions that used

these other methods rather than using the transmission itself to determine location, it does not follow

that any invention using these other methods caimot infringe on the '863 Patent. Plaintiffs' response
to the office action, emphasizing the use of the transmission to determine the location of the device,

only further supports "the transmission between the electronic device and said host system is used
to determine the location of said electronic device" for the construction of "said transmission via said

communication links used for determining the location of said electronic device."
The court concludes that the correct construction of the term "one or more of the global

network communication

links

used to enable transmission between said electronic device and said

host system, said transmission via said communication

links

used for determining the location of

said electronic device" is: "the identification of one or more (perhaps less than all) of the
14

connections (either direct or indirect) between two nodes in the Internet (one of the nodes may
be the electronic device itself) used to enable data transmission between said electronic device

and said host system; the transmission between the electronic device and said host system is
used to determine the location of said electronic device."

2. "one or more

of the Internet communication links used to enable transmission between said

electronic device and said host system, said communication links used for determining the location

of said electronic device"
Defendants' argument regarding this proposed construction is nearly identical to their
argument for the last term, citing specific embodiments from the

'758

Patent specification and

arguing that the prosecution history limits Plaintiffs to Defendants' construction.

Plaintiffs argue that this claim term differs from the first in two respects. First, the term
refers to "Internet communication links" rather than the broader "global network communications
links,"

and second, the term does not require the limitation that "said transmission be used for

determining the location of said electronic device," but instead requires that "said communication
links"

be used for determining the location.
As for the first difference, the parties have agreed that "global network" as used in this case

refers to the Internet.
communication

links" thus

The terms "Internet communication links" and "global network

have no effective difference in the context of this case, and the court will

accordingly construe the phrase "one or more of the Internet communication links used to enable

transmission between said electronic device and said host system" the same as it construed "one or

15

more ofthe global network communication links used to enable transmission between said electronic
device and said host system" in the first disputed claim term.
As for the second difference, Plaintiffs contend that the distinction is significant because it

undermines Defendants' argument that the file history of the '863 Patent applies. Specifically,
Plaintiffs point out that: (1) Claim 72 of the '758 Patent was already allowed by the time the
amendment to Claim

1

of the '863 Patent was made and (2) Claim 72 of the '758 Patent does not

include the language that was the subject of the amendment and the remarks from the '863 Patent
file history. Thus, Plaintiffs argue that the "said transmission via" language added to Claim

1

of the

'863 Patent, as well as the accompanying explanation, do not apply to this claim term.

When different words or phrases are used in separate claims, a difference in meaning is
presumed. Tandon Corp. v. Un ited States Int'l Trade Comm 'n, 831 F.2d 1017, 1023 (Fed.Cir. 1987).
This principle of claim construction would suggest that the difference in the use of terms has

significance and that "said communication links" should not be limited to the construction of "said

transmission." Nystrom

v.

TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005). However, simply

noting the difference in the use of claim language does not end the matter. Id. Different terms or
phrases in separate claims may be construed to cover the same subject matter where the written
description and prosecution history indicate that such a reading of the terms or phrases is proper. Id.
As this claim term was approved before prosecution of the '863 Patent, the court is not

required to impose the amendment to Claim

1

of the '863 Patent, or Plaintiffs' discussion

surrounding the amendment, onto Claim 72 of the '758 Patent. See Georgia-PacfIc Corp.

v.

US.

Gypsum Co., 195 F.3d 1322, 1333 (Fed. Cir. 1999) ("for [Plaintiff] to be bound by the statement

made to the PTO in connection with a later prosecution of a different patent, the statement would

16

have to be one that the examiner relied upon in allowing the claims in the patent at issue")
However, statements made in connection with a later application as to the scope of a disclosed

invention are not irrelevant to claim construction of an earlier invention. As the Federal Circuit has
explained:
We rejected the argument that the patentee was bound, or estopped, by a statement
made in connection with a later application on which the examiner of the first
application could not have relied. We did not suggest, however, that such a
statement of the patentee as to the scope of the disclosed invention would be
irrelevant. Any statement of the patentee in the prosecution of a related application
as to the scope of the invention would be relevant to claim construction, and the
relevance of the statement made in this instance is enhanced by the fact that it was
made in an official proceeding in which the patentee had every incentive to exercise
care in characterizing the scope of its invention.
Microsoft Corp.

v.

Multi-Tech Sys., Inc.,

357 F.3d 1340, 1350 (Fed. Cir. 2004). Accordingly, though

not binding, the explanations provided by Plaintiffs in the prosecution of the '863 Patent are relevant
to construction of claim terms from the '758 Patent.
As was discussed in context of the first disputed claim term, during prosecution of the '863

Patent, the examiner rejected Claim

1

as being obvious over prior art. Plaintiffs amended Claim 1

to include the "said transmission via" language and submitted a response to the office action

distinguishing the invention from prior art, contending that, unlike the prior art, the present invention
used the transmission via the communication links to determine the location of the electronic device,
and changed the phrase "said communication links" to "said transmission via said communication

links" in order to clarify what was being claimed. Plaintiffs asserted that the examiner's rejection

of Claim 1 for being obvious was "respectfully traversed." Plaintiff then provided the amendment
to Claim 1 and followed with an explanation of how the invention actually worked and how this was
not made obvious in light of the prior art. The court, after reading Plaintiffs' amendment and the

17

surrounding discussion, interprets the statement as a clarification of the term and not a limitation of
it. The court believes that this clarification provided in Plaintiffs' amendment to Claim

1

of the '863

Patent, explaining to the examiner what is meant to be claimed, applies to the similar Claim 72 of
the '758 Patent. Accordingly, the court will construe this term as it construed the first disputed term.
The court adopts the following definition of "one or more of the Internet communication

links used to enable transmission between said electronic device and said host system, said
communication links used for determining the location of said electronic device": "the

identification of one or more (perhaps less than all) of the connections (either direct or

indirect) between two nodes in the internet (one of the nodes may be the electronic device itself)
used to enable data transmission between said electronic device and said host system; the

transmission between the electronic device and said host system is used to determine the
location of said electronic device."

3. "agent"

Plaintiffs argue that, as "agent" is used only in the preambles, it does not limit any of the
asserted claims and should not be construed as a claim limitation. See Symantec Corp.

v.

Computer

Assocs. Int'l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008) ("it is assumed that the preamble language

is duplicative of the language found in the body of the claims or merely provides context for the

claims, absent any indication to the contrary in the claims, the specification or the prosecution

history"); Rowe

v.

Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (stating a preamble is not a claim

limitation "where a patentee defines a structurally complete invention in the claim body and uses the

preamble only to state a purpose or intended use for the invention"). If the term "agent" is construed,
18

Plaintiffs propose that "agent" means "software, firmware, or hardware programmed with a
predefined task set installed on a device to be protected." Plaintiffs support this construction with
Fig. 1 of both the '758 and '863 Patents, which provides that the "agent" is "implanted via hardware,

software, firmware (such as ROM, flash ROM, EPROM, microprocessor)" and that the "Agent' is

implanted on 'Client' Device." '758 Patent, Fig.

1;

'863 Patent, Fig.

1.

In addition, Plaintiffs point

to both the '758 and '863 Patents' summary of inventions, which state: "This invention enables

electronic devices to be surveyed or monitored by implanting thereon an intelligent agent with a pre-

defined task set." '758 Patent, 2:19-21; '863 Patent, 2:31-34.

Defendants support their construction with language from the patent specifications as well
as prosecution history

of the family of seven patents to which the '758 and '863 Patents belong.

Defendants argue that the specifications of these patents consistently state that the agent is hidden
and designed to evade detection. Defendants point to the prosecution history of the U.S. Patent No.
6,507,914 ("the '914 Patent"), a patent in the '758 and '863 Patents' family of patents, in which the

Plaintiffs distinguished the invention from prior art by highlighting claim language that describes
an agent "hiding within the computer" and describing the use of a "transparent agent." Defendants

also provide an expert report by Michael Lester, a consultant with a technological corporation. The

report asserts that Plaintiffs' proposed definition is not used in the industry and provides an article

written in 1996 for a workshop at the University of Method that discusses the definition of agent.
See Stan Franklin & Art Graesser, Is it an Agent, or just a Program?: A Taxonomy for Autonomous

Agents, INTELLIGENT AGENTS III AGENT THEORIES, ARCHITECTURES, AND LANGUAGES Vol. 1193,

21,21-35 (1997). The article offers a variety of definitions for the term "agent." Most definitions

19

describe a computer system or application that performs tasks. None of the definitions provide any
suggestion of hiddenness, stealthness, or transparency. See id.

Plaintiffs respond that even though the specification refers to the agent being hidden and
stealth, it is improper to so limit the claim. They point out that the law is clear that "[e]ven when

the specification describes only a single embodiment, the claims of the patent will not be read

restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
words or expressions of manifest exclusion or restriction." Liebel-Flarsheim, 358 F.3d at 906.

Plaintiffs contend that although the agent being stealthy is a feature of the preferred embodiment,
there is nothing in the claims to limit the invention to being stealthy; nor is there anything in the
claims, the specification, or the file history that demonstrates a clear intention to limit the claim

scope to exclude agents that are not stealthy.
The court finds a number of problems with Defendants' proposed construction. The Federal

Circuit has repeatedly stated that limitations from the specification are not to be read into the claims.

Comark Comm., Inc.

v.

Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (listing cases).

Although the specification may describe a claim term's functional purpose, it does not necessarily
aid in the interpretation of the phrase, or shed light on the meaning of the term to the inventor or the

common meaning to one of skill in the art. See id. at 1187. Defendants' support their argument with

language from the specification that refers to the objective of the invention to evade detection by an
unauthorized user. However, "[t]he fact that a patent asserts that an invention achieves several
objectives does not require that each of the claims be construed as limited to structures that are
capable of achieving all of the objectives." Liebel-Flarsheim, 358 F.3d at 908. The claim itself

contains no reference to the agent being hidden to the user, nor does the specification show a clear
20

intention by the inventor to limit the claim in this way, or suggest that the inventor or one of skill in
the art understood "agent" to mean something hidden. The court also finds the prosecution history

of the '914 Patent unpersuasive, as it discusses claim language not at issue here. Specifically, the
claims at issue here do not refer to a "transparent agent" nor do they include language claiming an
agent that hides within the computer, unlike the claims discussed in the response to the office action
for the '914 Patent.

Furthermore, the doctrine of claim differentiation cuts against Defendants' construction. The
doctrine stems from "the common sense notion that different words or phrases used in separate
claims are presumed to indicate that the claims have different meanings and scope." Karlin Tech.,
Inc.

v.

Surgical Dynamics, Inc., 177 F.3d 968, 97 1-72 (Fed. Cir.1999). Although the doctrine of

claim differentiation is not a hard and fast rule of construction, it does create a presumption that each

claim of the patent has a different scope. Comark Comm., Inc., 156 F.3d at 1187 (Fed. Cir. 1998).
There is presumed to be a difference in meaning and scope when different words or phrases are used
in separate claims; to the extent that the absence of such difference in meaning and scope would

make a claim superfluous, the doctrine of claim differentiation states the presumption that the

difference between claims is significant. Id.; Tandom Corp.
831 F.2d 1017, 1023 (Fed. Cir. 1987). Claim 36

v.

United States mt '1 Trade Comm 'n,

of the '863 Patent incorporates Claim

1

by

reference and further claims "compromising the step of loading the agent within said electronic

device for with said host system such that said agent evades detection." To interpret "agent" to mean
an agent that is transparent, hidden, and stealthy would render claim 36 superfluous and redundant

of claim

1.

See id.

21

Although the doctrine of claim differentiation is at its strongest where the limitation sought
to be read into an independent claim already appears in a dependent claim, there is still a

presumption that two independent claims have different scope when different words or phrases are
used in those claims. Seachange Int'l, Inc.
2005); see also Kraft Foods, Inc.

v.

v.

C-COR, Inc., 413 F.3d 1361, 1368-69 (Fed. Cir.

Int'l Trading Co., 203 F.3d 1362, 1365-69 (Fed.Cir.2000).

Claim 72 of the '758 Patent is similar to Claim

1

of the same patent, but refers to "the Internet"

rather than "a global network" and omits one of the three steps that comprise Claim

1.

The omitted

step is "loading said agent within said electronic device for initiating communication with said host

system such that said agent evades detection." The omission of this step suggests that the agent in

Claim 72 need not be loaded in such a way as to evade detection. The court finds that the term
"agent" is not limited to being transparent, hidden, stealthy, or not noticeable as argued by
Defendant, nor is the user required to have "no idea the agent is present."
The doctrine of claim differentiation likewise prevents the court from adopting all of

Plaintiffs' proposed construction, "software, firmware, or hardware programmed with a predefined
task set installed on a device to be protected." Claim 43 of the '863 Patent incorporates Claim

1

by

reference and further claims "wherein the Agent is encoded in one or more forms, including

software, firmware and hardware." Again, to interpret "agent" to be "software, firmware, or

hardware" would render Claim 43 superfluous. However, the court agrees with the remainder of

Plaintiffs' proposed construction: the term "agent" is used consistently throughout the claims and
specifications to refer to an agent with a "predefined task set installed on a device to be protected."

Finally, an accepted, ordinary meaning of the word "agent" is "a computer application
designed to automate certain tasks (as gathering information online)." See MERRIAM-WEBSTER'S
22

COLLEGIATE DICTIONARY

24(11th ed. 2004). This meaning is bolstered by the Defendants' Franklin

& Graesser article. The court believes that "a computer application designed to automate certain

tasks" likely comports with what would have been a commonly known and understood term to a
person having ordinary skill in the art at the time of the invention. See CCS Fitness, Inc.

v.

Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (stating there is "a heavy presumption that
a claim term carries its ordinary and customary meaning"). Nothing in the specification suggests that

the term "agent" is used in a way inconsistent with this definition. To the contrary, although never

explicitly stated, "agent" is used contextually to refer to a computer application throughout the patent
document. Implicitly, an agent "with a predefined task set" would be designed to automate those
tasks.
The court concludes that "agent" means "a computer application with a predefined task

set installed on a device to be protected."

4. "location"

Defendants first argue that judicial estoppel applies to this claim and cite cases which have
held that a party who benefits from one interpretation of a claim caimot later argue an inconsistent
interpretation. It is unclear from Defendants' briefing where Defendants believe Plaintiffs have
argued an inconsistent interpretation of the term "location." In Stealth Signal, the Plaintiffs argued
for the same construction proposed here. See Absolute Software, Inc.

v.

Stealth Signal, Inc. et al.,

No. H-05-1416 (S.D. Tex. Feb. 8, 2008) (report and recommendation on claim construction). The
court will decline to apply the doctrine ofjudicial estoppel.

23

Defendants next argue that their construction is consistent with the specification and cite a
number of sections of the specification that contain phrases such as "physically locate the computer"
and "track the physical location." Plaintiffs argue that no construction is necessary, but if the court

requires one, "physical location" is appropriate. Plaintiffs cite similar Sections of the specification
in support.
It is clear from the intrinsic evidence provided by both parties that the term "location" refers
to the physical location of the device. Every time the word "location" is used in either patent, it

refers to the physical location of the device. Nowhere in either patent is "location" defined as

"accurate enough location of the electronic device to enable a person to go and retrieve the electronic

device." Nowhere in either patent is there any discussion that specifies how accurate the "location"

must be. Applying the "heavy presumption' that a claim term carries its ordinary and customary
meaning," Teleflex, 299 F.3d at 1325, the court adopts Plaintiffs' definition of this term and will
construe "location" to mean "physical location."

C.

Summary Table ofAdopted Constructions

Claim TermfPhrase

Court's Construction

"identifying indicia"

information that indicates the identity of the
electronic device, whether or not this
information also indicates the identity of the
agent

('758 Patent, Claim 72;
'863 Patent, Claim 1)

the Internet; the telephone network is not a
global network, but the internet includes and
uses the telephone network

"global network"

('863 Patent, Claim 1)

24

"automatically"

('863 Patent, Claim 1)

acting or operating in a manner essentially
independent of external influence or control;
this action or operation may be triggered by
some external event, but such a triggering
event must not involve a human command
directing the action or operation

of the global network "the identification of one or more (perhaps
communication links used to enable less than all) of the connections (either direct
transmission between said electronic device and or indirect) between two nodes in the
said host system, said transmission via said Internet (one of the nodes may be the
communication links used for determining the electronic device itself) used to enable data
location of said electronic device"
transmission between said electronic device
and said host system; the transmission
"one

or

more

('863 Patent, Claim 1)

between the electronic device and said host
system is used to determine the location of
said electronic device"

"one or more of the Internet communication "the identification of one or more (perhaps
links used to enable transmission between said less than all) of the connections (either direct
electronic device and said host system, said or indirect) between two nodes in the
communication links used for detennining the internet (one of the nodes may be the
location of said electronic device"
electronic device itself) used to enable data
transmission between said electronic device
('758 Patent, Claim 72)
and said host system; the transmission
between the electronic device and said host
system is used to determine the location of
said electronic device"

"agent"

"a computer application with a predefined
task set installed on a device to be protected"

('758 Patent, Claim 72;
'863 Patent, Claim 1)
"location"

('758 Patent, Claim 72;
'863 Patent, Claim 1)

"physical location"

IV.

Conclusion
For the above reasons, the court construes the claims as noted and so ORDERS. No further

claim terms require construction.

IT IS FURTHER ORDERED that this case is set for a Scheduling Conference on March
26,2014, at 9:30 a.m., in Courtroom 7, Seventh Floor, United States Courthouse, 501 W. 5th Street,
Austin, Texas 78701. The parties shall meet and confer in advance of that date in an attempt to settle

this case. If the case is not settled, the parties shall confer in an attempt to reach agreement on a
schedule to follow for the remainder of this case. The court will render a Scheduling Order as a

result of the March 26, 2014 conference.
SIGNED this

day of February, 2014.

UIt'fI

DSTATE