Monkeymedia, Inc. v. Walt Disney Studios Home Entertainment, et al

Filing 305

CONSOLIDATED MARKMAN ORDER accepting as modified Bayer's 302 Report and Recommendation of the Special Master. Signed by Judge Sam Sparks. (klw)

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

AUSTIN DIVISION

201
I I

'i p'..

MONKEYMEDIA, INC.,
Plaintiff,
Case No. A-1O-CA-319-SS

-vs-

APPLE, INC.,
Defendant.

MONKEYMEDIA, INC.,

Plaintiff,
Case No. A-1O-CA-533-SS

-vs-

BUENA VISTA HOME ENTERTAINMENT,
INC. d/b/a WALT DISNEY STUDIOS HOME
ENTERTAINMENT et al.,
Defendants.

CONSOLIDATED MARKMAN ORDER
BE IT REMEMBERED on this day the Court reviewed the file in the above-styled causes,

and specifically Plaintiff MONKEYmedia, Inc.'s Supplemental Claim Construction Brief [#276];'

Defendants Apple, Inc., Buena Vista Home Entertainment, Inc. d/b/a Walt Disney Studios Home
Entertainment, Inc., Twentieth Century Fox Home Entertainment, LLC, Lions Gate Entertainment
Inc., Paramount Pictures Corporation, Sony Pictures Home Entertainment, Sony Electronics Inc.,

Sony Computer Entertainment America, LLC, Warner Home Video, Inc., and Universal Studios Inc.

(collectively, Defendants)'s Opening Claim Construction Brief [#277]; Plaintifrs Response to

Defendants have made joint filings with respect to the pre- and post-Markman briefing, and for ease of
reference, the Court uses the docket entiy numbers reflected in case number A:1O-CA-533-SS.

8:214

Defendants' [Opening] Claim Construction Brief [#286]; Defendants' Response Claim Construction

Brief [#287]; the parties' Agreed Claim Construction Chart [#288]; the parties' Joint Claim
Construction Chart [#301]; Plaintiff's Opening Post-Markman Brief [#297]; Defendants' Opening
Post-Markman

Brief [#298]; Plaintiff's Response to Defendants' Opening Post-Markman Brief

[#299]; Defendants' Responsive Post-Markman Brief [#300]; the Report and Recommendation

(R&R) of the Special Master [#302]; Plaintiff's Objections [#303]; and Defendants' Response to

Plaintiff's Objections [#3 04]. Having reviewed the documents, the governing law, the arguments

of the parties at the Markman hearing, and the file as a whole, the Court now enters the following
opinion and orders.

Background
This case involves two patent infringement suits brought by MONKEYmedia against
Defendants. At issue in both suits is United States Patent No. 6,393,158 (the '158 Patent), titled

"Method and Storage Device for Expanding and Contracting Continuous Play Media Seamlessly."
The litigation began in 2010 when MONKEYmedia filed suit alleging infringements of patents from
two families: (1) the "Deemphasis Patents" (U.S. Patents No. 6,177,938, No. 6,219,052, and No.

6,335,730) and (2) the "Seamless Expansion Patents," including the patent-in-suit and two other

patents (U.S. Patents No. 7,467,218 and No. 7,890,648). Both suits are consolidated for purposes

of this Markinan order, but will be separately tried on the merits.

See

Order of Nov. 2, 2010 [#147].

The '158 Patent describes a method for the playback of digitally stored multimedia content
in which the person playing the multimedia content can choose to temporarily halt playback of the

main content, play optional "expansion" content, then, at the conclusion of the expansion content,
begin playing the main content once again. For example, an advertiser might display a banner ad
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on a mobile device while a person is watching a video, and if the viewer clicks on the banner ad, the
ad goes full-screen and pauses the video; or, a cue for "bonus content" might pop up on a television

screen during the playing of a DVD movie, and if the viewer clicks on the pop-up, the bonus content
is played and the main content is paused.

The Court, through Special Master Karl Bayer, held its first of three Markinan hearings in
this case on March 1-2, 2011. The March 1-2, 2011 Markinan hearing concerned the Deemphasis
Patents. The Special Master issued his Report and Recommendation on claim construction on

September 5, 2012, which the Court adopted on February 22, 2013.
On June 28-29, 2011, the Court, through the Special Master, held the second Markman

hearing, which concerned the Seamless Expansion Patents. No Report and Recommendation issued

following the hearing, however, as shortly thereafter, the Court stayed both cases pending the
outcome of the U.S. Patent and Trademark Office (PTO) '5 reexamination of the Seamless Expansion
Patents. See Order of July 27, 2011 [#228]. During reexamination, the PTO rejected Claims 1-34

of the '158 Patent as unpatentable; MONKEYmedia did not appeal the PTO's finding to the Federal
Circuit, and the PTO subsequently cancelled those claims. MONKEYmedia formally disclaimed
all claims in the other two Seamless Expansion Patents, ending the reexamination proceedings.

Claims 35-41 of the '158 Patent, seven new claims based on the same specification and

figures as the previously cancelled claims, were permitted by the PTO after reexamination. On

MONKEYmedia's motion, the Court lifted the stay and permitted MONKEYmedia to file a
supplemental complaint. See Order of June 13, 2014 [#260]. Claims 35-41 are now at issue in both
cause numbers. The Court, through the Special Master, held the most recent Markman hearing on

October 30-3 1, 2014, and the Special Master issued his Report and Recommendation on claim
-3-

construction on February 5, 2015. To the extent the parties have made specific objections to the
Special Master's factual findings or legal conclusions, they are entitled to de novo review of those

findings and conclusions.

FED. R.

Civ. P. 53(f).

Analysis

Claim ConstructionLegal Standard

I.

When construing claims, courts begin with "an examination of the intrinsic evidence, i.e.,
the claims, the rest of the specification and, if in evidence, the prosecution history." CCS Fitness,
Inc.
v.

v.

Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); see also Interactive Gifi Express, Inc.

Compuserve Inc., 256 F.3d 1323, 1327 (Fed. Cir. 2001).
The words in the claims themselves are of primary importance in the analysis, as the claim

language in a patent defines the scope ofthe invention. SRIInt 'lv. Matsushita Elec. Corp., 775 F.2d
1107, 1121 (Fed. Cir. 1985) (en banc), The words of a claim "are generally given their ordinary and

customary meaning." Phillips v. A JVfI Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). "[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."2

Id. at 1313. The inquiry into how a person

of ordinary skill in the art

understands a claim term provides an "objective baseline" from which to begin claim interpretation.
Id. The person of ordinary skill in the art is understood to read a claim term not only in the context

of the particular claim in which the term appears, but in the context of the entire patent, including

2

This hypothetical person is now commonly referred to simply as an "ordinarily skilled artisan." E.g., Power
Integrations, Inc. v. Fairchild Semiconductor Int'l, inc., 711 F.3d 1348, 1365-66 (Fed. Cir. 2013).

the specification; thus, both the plain language of the claims and the context in which the various
terms appear "provide substantial guidance as to the meaning of particular claim terms." Id. at 1314.
The specification also plays a significant role in the analysis. Id. at 1315. The Federal
Circuit has repeatedly reaffirmed the principle that the specification "is always highly relevant.
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)). In interpreting the

effect the specification has on the claim limitations, however, courts must pay special attention to

the admonition that one looks "to the specification to ascertain the meaning of the claim term as it
is used by the inventor in the context

of the entirety of his invention, and not merely to limit a claim

term." Interactive Gift, 256 F.3d at 1332 (internal quotation marks and citations omitted).
The final form of intrinsic evidence the Court may consider is the prosecution history.

Although the prosecution history "represents an ongoing negotiation between the PTO and the
applicant" and therefore "often lacks the clarity of the specification and thus is less useful for claim

construction purposes," it can nonetheless "often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course ofprosecution, making the claim scope narrower than it would otherwise be."

Phillips, 415 F.3d at 1317.
Aside from the intrinsic evidence, the Court may also consult "extrinsic evidence," which
is "all evidence external to the patent and prosecution history, including expert and inventor

testimony, dictionaries, and learned treatises." Id. While extrinsic evidence "can shed useful light
on the relevant art," the Federal Circuit has explained it is "less significant than the intrinsic record
in determining 'the legally operative meaning of claim language." Id. at 1317 (quoting

-5-

C.R. Bard,

Inc.

v.

US. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic evidence in the form of

expert testimony may be useful to a court for "a variety of purposes, such as to provide background
on the technology at issue, to explain how an invention works, to ensure that the court's

understanding of the technical aspects of the patent is consistent with that of a person of skill in the
art, or to establish that a particular term in the patent or the prior art has a particular meaning in the

pertinent field." Id. at 1318. However, conclusory, unsupported assertions by an expert as to the
definition of a claim term are not useful, and should be discounted. Id. In general, extrinsic
evidence is considered "less reliable than the patent and its prosecution history in determining how
to read claim terms," although it may be helpful. Id.

The purpose of claim construction is to "determin[e] the meaning and scope of the patent

claims asserted to be infringed." 02 Micro Int'l Ltd.

v.

Beyond Innovation Tech. Co., 521 F.3d

1351, 1360 (Fed. Cir. 2008) (quotingMarkman v. Westview Instruments, Inc., 52 F.3 d 967, 976 (Fed.
Cir. 1995), aff'd, 517 U.S. 370 (1996)). Thus, "[w]hen the parties raise an actual dispute regarding

the proper scope of these claims, the court, not the jury, must resolve that dispute." Id. However,

"district courts are not (and should not be) required to construe eveiy limitation present in a patent's
asserted claims." Id. at 1362. For example, no construction is required if the requested construction
would be

"an obligatory

exercise in redundancy," or if the "disputed issue [is] the proper

application of a claim term to an accused process rather the scope of the term." Id. (quoting US.

Surgical Corp.

v.

Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)).

II.

Application

A.

Special Master's Recommendations
The Special Master's recommendations are as follows:

Term

Recommendation

Person of Ordinary Skill in the Art

A bachelor's degree in computer science,
cognitive science, computer engineering,
computer user interface design, multimedia or
an equivalent degree, and at least 2 years of
experience in the field of computer user
interface design or software design &
implementation

-orA post graduate degree in computer science,
cognitive science, computer engineering,
computer user interface design, multimedia or
an equivalent degree, and at least one year of
experience in the field of computer user
interface design or software design and
implementation

Claim Term
stored content

Recommended Construction
Content that minimally contains images or text
that can be displayed, and is stored

Claims 35, 36, 37, 38, 39, 40, 41

segment

A sequence of stored content that is fixed and
predetermined prior to playing

Claims 35, 36, 37, 38, 39, 40, 41

link

A connection from one specified segment to
another specified segment

Claims 35, 36, 37, 38, 39, 40, 41

linking

Following the connection from one specified
segment to another specified segment

Claims 35, 36, 37, 38, 39, 40, 41

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expansion link

A link from a specified segment to a specified
expansion segment

Claims 35, 36, 37, 38, 39, 40, 41

continuing segment

The segment of main content that plays after
the "at least one segment"

Claims 35, 36, 37, 38, 39, 40, 41
cue

A prompt or guiding suggestion

Claims 35, 36, 37, 38, 39, 40, 41

highlighting

Calling attention to a cue or to other
information

Claims 35, 36, 37, 38, 39, 40, 41

"playing said segments further comprises
highlighting an expansion segment cue"

No construction necessary

Claims 35, 36, 37, 38, 39, 40, 41

discernible entity

A graphical or auditory element that is
distinguishable from the surrounding context

Claims 35, 36

"playing said segments further comprises No construction necessary
playing at least one discernible entity"
Claims 35, 36

transition
Claims 35, 36

continuity link offset
Claims 35, 36

Audio or visual content or effect that is
presented while passing from one portion of a
presentation to another portion of the
presentation
A point temporally located after the first
terminus of the continuing segment

"calculating the first terminus of the Indefinite
continuing segment by reference to a
continuity link offset"
Claims 35, 36
A receptacle for holding expansion cues into
and from which cues can be inserted and
removed

expansion cue container
Claims 37, 38, 39

"wherein

determining whether

said Indefinite

expansion segment cue has been selected
further comprises determining if the
expansion cue container has been selected
for visual display"
Claims 38, 39

"determining whether said expansion Indefinite
segment cue has been selected further
comprises causing selection of at least one
other expansion cue from the plurality of
expansion cues if said expansion segment cue
has been selected"
Claim 39

"a motion to select said expansion cue No construction necessary
without pushing a button on a selector
device"
Claim 41

To the extent the parties have not objected to the Special Master's constructions of certain

claim terms, the Court accepts the Special Master's recommendations as to those claim terms
without further comment. Those claim terms are: "continuing segment"; "cue"; "highlighting";

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"playing said segments further comprises highlighting an expansion segment cue"; "discernible
entity"; "playing said segments further comprises playing at least one discernible entity";

"transition"; and "a motion to select said expansion cue without pushing a button on a selector
device." Further, as the parties have not objected to the Special Master's definition of a person of
ordinary skill in the art, the Court accepts that definition without further comment.
B.

Objections
The Court now turns to the parties' specific objections.
1.

"stored content"

The Special Master recommended this term be construed as: "Content that minimally

contains images or text that can be displayed, and is stored." The parties agree stored content is

multimedia content which is stored so it can later be accessed and played, but disagree concerning
whether stored content can encompass audio content absent images or text. MONKEYmedia argues
the term must be construed to encompass an audio stream playing without any accompanying video
or text, while Defendants take the position all stored content must contain video or text (but can

contain, in addition to the video or text, audio). In their pre-hearing briefing, Defendants argued the
term either required no construction or should be construed as "audio/visual content that is stored";
in their post-hearing briefing, however, Defendants proposed the alternative construction ultimately

recommended by the Special Master.
The Special Master's construction is directly supported by the language of the specification.

Specifically, the specification states that the invention pertains to "digitally stored interactive

multimedia content" and explains that "multimedia" "can be defined as minimally containing a

stream ofimage or text content forming a perceived continuity when presented to an observer/user."
-10-

Pl.'s Hr'g Ex. 57 ('158 Patent) at col. 111. 10-11 (emphasis added). The Special Master's
construction thus tracks the specification in delineating the scope of stored content: it must, at

minimum, contain image or text content.

MONKEYmedia's objection is twofold: first, MONKEYmedia complains the construction
is unhelpful because it repeats the terms "stored" and "content"; second, MONKEYmedia reiterates

the construction "excludes the possibility of an audio stream playing at one point and a video stream

playing at another point" and claims by excluding that possibility, the Special Master "strays from
the teachings of the patent about multimedia content." Objections [#303] at 2, 3. Neither objection
is persuasive. As for the repetition of the words "stored" and "content" in the Special Master's

construction, the Court notes MONKEYmedia's proposed construction of "stored content" (were
the Court to find it necessary to construe the term) also included the words "stored" and "content."
See P1.' s Supp.

Brief [#276] at

10 (suggesting the construction "audio/visual content that is stored")

The parties disagree as to the breadth of the term "stored content" as used in the '158 Patent, not as
to the generic definitions of the words "stored" and "content." As for exclusion of the possibility

an audio stream unaccompanied by video or text could be stored content, that exclusion is precisely

what the specification teaches in defining multimedia as minimally, or, at minimum, containing
images or text. In addition to "minimally containing a stream of image or text content," the
specification explains multimedia "may further contain content streams forming perceived audio

continuities" and "may further contain other content streams including but not limited to closed
captioned support.

.

.

." '158 Patent col. 111. 10-19 (emphasis added). By stating multimedia "may

further contain" other types of contenti.e., may contain other types of content in addition to the

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types that already existthe specification reinforces its teaching concerning what multimedia must

contain at minimum.
The Court agrees with the Special Master's recommendation, and MONKEYmedia's

objections are OVERRULED.
2.

"segment"

The Special Master recommended this term be construed as: "A sequence of stored content
that is fixed and predetermined prior to playing." MONKEYmedia strongly objects, urging its

contrary definition, "a stream or portion of a stream of audio/visual content," appropriately captures
the meaning of the term, at the time of the invention, to a person of ordinary skill in the art.

The parties' differing constructions of this term reveal their fundamental disagreement

regarding what invention, precisely, is disclosed by the '158 Patent. Both parties agree that as of the
date of the invention, "segment" loosely connoted something with a beginning and an end, and both
parties agree that within the context of the '158 Patent, "stored content" is comprised of segments.
At that point, the parties diverge. MONKEYmedia contends segments are dynamically defined by
the end user, meaning by choosing to perform a content expansion, the end user, at the moment of

decision, determines the end of a segment of main content and the beginning of a segment of

expansion contentor, in the language of the patent, determines the second terminus of the "at least
one segment" and the first terminus of the "continuing segment." In contrast, Defendants argue

segments, and therefore their beginning and ending termini, are predetermined and fixed during the

content authoring process; in other words, in Defendants' view, each segment is a piece of stored
content that exists and has a known beginning and ending before it is played.

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The Court finds the claim language, specification, and prosecution history all support

Defendants' position and the Special Master's recommendation. First, the first limitation of each

of the four independent claimsClaims 35, 37, 40, and 41contemplates segments with first and
second termini that are known before any content is played. Each of the claims begins by reciting:

"A method for playing a stored content comprising: providing a plurality of segments which
collectively comprise said stored content, wherein each of said segments has afirst terminus and a

second terminus.

.

20-23, 63-66, col. 2

." '158 Patent, Ex Parte Reexamination Certificate (Reexam. Cert.) col. 111.
11.

36-39, col.

3

11.

1-4 (emphasis added). In a subsequent step of each of the

claims, "at least one segment" of the stored content is "play[ed]," i.e., presented to the end user. Id.
col. 11. 29, col. 2

11.

5, 45, col. 3

1.

10. Consequently, when the steps of each claim are performed

in order, the first and second termini of the segments are known before they are played, not defined
on the fly by the end user.
The specification supports this understanding of the claim language. The summary of the
invention explains, for example, that one method of the invention "includes playing at least one

segment with the temporal flow [and] determining whether a content expansion is desired prior to

reaching the second terminus." '158 Patent col.

7

11.

30-3 1 (emphasis added). Were the second

tenninus of the "at least one segment" unknown while that segment played, this language would not
make sense, as it contemplates a decision made prior to arrival at a known point (the second
terminus). Throughout the specification, the patent similarly describes terrnini as defined rather than

unknown points within segments. See, e.g., id. col. 9

11.

34-36 ("The method further includes.

determining whether a content expansion is desired prior to reaching the second terminus."); col. 10
11.

1-8 ("Each of the segment descriptors of the method includes a first terminus, a second terminus
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and a continuity link. The first terminus references a first time point of a continuous play media

stream segment.

. . .

The second terminus references a second time point of the continuous play

media stream segment."); col. 16 11. 3-6 ("In certain preferred embodiments of the invention, each

of these [expansion] decision points is at the ending terminus of the segment it is in and the
beginning terminus of the continuing segment.")
MONKEYmedia argues the Special Master's recommended construction is inconsistent with
the specification's teaching that "[un certain preferred embodiments, one or both of the termini may
grow earlier or later temporally with regards to the continuous play content." '158 Patent col. 16 11.

38-40. The Court disagrees. As Defendants point out, nothing in this language supports
establishing the beginning and ending termini of a segment on the fly according to end-user input;
rather, the language refers to a choice that can be made in certain embodiments of the invention

during the authoring processspecifically, whether the author chooses to begin the expansion

segment temporally earlier or later vis-à-vis the continuous play content.
{A:10-CA-319, #161] at 64:17-65:2.

See

Markman Hr'g Tr.

That understanding of the language comports with the

remainder of the specification and the claim language indicating termini are known prior to user
interaction with the multimedia content.
The Special Master's recommended construction is also supported by the prosecution history.

During reexamination, MONKEYmedia attempted to distinguish a prior art reference from the

invention disclosed by the '158 Patent by arguing that unlike the prior art reference, which taught
predetermined, fixed segments encoded during the authoring process, the specification of the '158
Patent teaches dynamically defined segments.

See Defs.'

Hr' g Ex. 69 at 42 ("In this dynamic system,

the 'second terminus' of the 'at least one segment' cannot be known until the decision point to
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expand is known. Similarly, the first terminus of the 'continuing segment' is not known until the

decision point to expand is determined."). The Examiner disagreed, explaining the '158 Patent also

taught fixed and predetermined segments ("scenes"): "With respect to [MONKEYmedia]'s
arguments that [the prior art reference] is comprised of fixed and predetermined scenes encoded
during an authoring process, Examiner notes that the '158 patent also has pre-determined scenes as
depicted in figure 3B, 7A, 7B and 8A-8B." Defs.' Hr'g Ex. 73 at 67. On appeal to the PTO Board,

MONKEYmedia re-urged its argument and the Examiner once again disagreed:
With respect to [MONKEYmedia] 's argument. . . that the instant invention discloses
dynamically defined segments and links which are different than predetermined and
fixed scenes encoded during an authoring process as discussed in [the prior art
reference], Examiner disagrees.... Examiner finds [MONKEYmedia]'s argument
that the defining of segments is "dynamic" to be inaccurate and not what is claimed
in claims 15-16 and 23 or supported by the Specification.

Defs.' Hr'g Ex. 77 at 59-60. The Examiner went on to explain the claim language describing
individual segments actually contradicted MONKEYmedia's position:
In fact, the first limitation of claims 15 and 23 state[sJ "wherein each of said
segments has a first terminus and a second terminus". Thus, it would seem that the
claim actually contradicts [MONKEYmedia] 's argument that the second terminus is

"not known" since the claim requires that the second terminus of the first segment
initially be known.
Id. at 66. The Board affirmed the Examiner's findings. See Defs.' Hr'g Ex. 78 at 2. While the

claims then under reexamination were cancelled, those presently at issue create the same
contradiction: as previously noted, the same phrase"wherein each of said segments has a first

terminus and a second terminus"appears verbatim in the first limitation of independent Claims 35,
37, 40, and 41. '158 Patent, Reexam. Cert. col. 111. 22-23, 65-66, col. 2 11. 38-39, col.

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3 11.

3-4.

The Court agrees with both the Special Master and the Examiner that MONKEYmedia's

contention segments are dynamically defined is unsupported by the specification and figures of the
'158 Patent.

Consequently, the Court adopts the Special Master's recommendation, and

MONKEYmedia's objections are OVERRULED.
3.

"link," "linking," and "expansion link"

The Special Master recommended the term "link" be construed as: "A connection from one
specified segment to another specified segment"; the term "linking" be construed as: "Following the

connection from one specified segment to another specified segment"; and the term "expansion link"
be construed as: "A link from a specified segment to a specified expansion segment." Similar to the

parties' dispute over the proper construction of the term "segment," their main disagreement
concerning the "link" terms is whether the connections between segments are created during the
authoring process or dynamically defined by the end user while the content is being presented.

The Special Master's recommendations track Defendants' proposed constructions of these
terms, with the exception that the Special Master omitted the word "predetermined" from his
recommendations as to "link" and "linking."

See

Defs.' Opening Post-Hr'g Brief [#298] at 13

(construing "link" as "a predetermined connection from one specified segment to another specified
segment" and "linking" as "following the predetermined connection from one specified segment to

another specified segment"). MONKEYmedia's primary objection is to the Special Master's use of
the word "specified," which MONKEYmedia argues "leaves room for Defendants to argue that

'specified implies 'predetermined" although the Special Master omitted that word from his
recommendation. Objections [#303] at 6. In MONKEYmedia's view, links need not be related to
specified segments; rather, because the connections between segments are allegedly dynamically
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defined, links are merely "rule[s] or collection{s] of rules that determine[] the selection of content
to play next." Id. at 7.

As with the term "segment," the Court finds the '158 Patent does not teach dynamic linking.

The independent claims describe "links" either as "associated with" segments, '158 Patent, Reexam.
Cert., col.

1

11.

26-3 8, or as connections "from" one segment "to" another segment, Id. col.

1

11.

36-37. Figure 3B, which "depicts the segment links between continuous play media segments,"
shows a segment which "has two links 114 and 116," one of which leads to an expansion segment
and one of which leads to another segment of main content.

See

'158 Patent fig. 3B, col. 12

11.

34-44. The specification explains in certain embodiments of the invention, the segment descriptor,
which identifies the segment and its termini, also contains a "continuity link" connecting the segment
to a "successor segment" and an "expansion

segment descriptor. Id. figs. 9A, 9B, col. 20

link

11.

pointer" connecting the segment to an expansion

29-46. Nowhere does the specification indicate that

user interaction with the media being displayed alters or determines the nature of those links.
Urging the Court to adopt its more expansive construction of the claim terms,

MONKEYmedia points to the following language:
Continuous play media segment 102 contains a link 118 to continuous play media
segment 104. In certain preferred embodiments, the link 118 may be implicitly
derived from the remembered state of the content player during the playing of
segment 100. In certain further preferred embodiments of the invention, this implicit
derivation may be determined by a stack included in the content player and the
indication to do this in certain preferred embodiments is a continuity link not
indicating a segment.

'158 Patent, col.

1211.

44-55. MONKEYmedia argues this teaches "rule-based links based on user

interaction." Objections [#303] at 7. The Court cannot agree. Rather, as to the link "implicitly
derived from the remembered state of the content player," the Court agrees with Defendants'
-17-

explanation: this language encapsulates how, in order to return to and play the next continuous play

media segment following an expansion, the content player follows the author-defined connections
between individual data structures (i.e., segment descriptors and expansion link descriptors) back
up through the data structure tree to the original continuous play media segment, "implicitly

deriving" the link between the original segment and next segment of content.

See

Markman Hr'g

Tr. [A: 1 0-CA-3 19, #161] at 195:18-198:21 (explaining the concept in detail). The remainder of the

excerpt explains an alternative embodiment of the invention in which the author can program the

content player to store a link between a segment of main content and a continuing segment on a
stack, and after the presentation of expansion material is complete, direct the player to retrieve that
link

and follow it to the continuing segment.

See

id.

at 199:19-200:8. The links involved in these

processes are necessarily fixed and predictable, not defined by the end user.
This understanding of links and linking as taught by the '158 Patent is also supported by its

prosecution history:
Regarding [MONKEYmedia] 's argument that the dynamic user experience designed
into the claimed invention is the result of giving control to the user, which drives
the linking between these segments, Examiner disagrees. Claims 1,7, 14, 15, and
23 do not recite . . . that the links are variably adaptive and computationally
responsive to viewers. The claims further do not recite. . . calculating links on the
fly.

Defs.' Hr'g Ex. 73 at 66. As with the previously cancelled claims described, the Court finds the
claims presently at issue do not teach calculating links on the fly or rule-based, adaptive connections

between segments. The Court is untroubled by MONKEYmedia's assertion the Special Master's
inclusion ofthe word "specified" in his recommended construction will permit Defendants to argue
the connections between segments are fixed; the specification teaches that the connections between

segments are fixed, and the Special Master's construction of the link-related terms captures that
teaching.

To avoid any potential for ambiguity, the Court finds insertion of the word

"predetermined" into the constructions of "link" and "linking" is appropriate. Accordingly, the
Court construes "link" as: "A predetermined connection from one specified segment to another
specified segment"; "linking" as: "Following the predetermined connection from one specified

segment to another specified segment"; and "expansion link" identically to the Special Master's
recommendation.
The Court adopts the Special Master's constructions of all three link-related terms AS
MODIFIED, and MONKEYmedia's objections are OVERRULED.
4.

"expansion cue container"

The Special Master recommended this term be construed as: "A receptacle for holding
expansion cues into and from which cues can be inserted and removed." MONKEYmedia argues
this construction improperly restricts the term to a single embodiment described in the patent:

specifically, a graphic depiction in the shape of a cup that is itself interactively accessible by the end
user. The Court disagrees that the Special Master's construction improperly restricts the claim term,

and finds his recommendation is supported by the specification and the prosecution history.

First, the Special Master accurately construed "expansion cue container" to refer to a

"receptacle." The specification describes the expansion cue container as something from which
expansion cues can "be[] removed," within which expansion cues can be "contained," and into
which expansion cues maybe "inserted." '158 Patent col. 13

11.

46-47, col. 1411. 16-17, 53-54.

During reexamination of the '158 Patent, in determining MONKEYmedia's new claim "wherein said

expansion segment cue is one of a plurality of expansion cues in an expansion cue container" was
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patentable, the Examiner explained: "The expansion cue container must be a visual expansion cue
container as specified in figures 5A-5E and the corresponding disclosure[.]" Defs.' Hr'g Ex. 73 at
94.

Figures 5A-5E all depict the expansion cue container as a receptacle, rather than more

generically as a shape or grouping of shapes.

See

'158 Patent figs. 5A, 5B, SC, 5E.

Further, the Court does not agree with MONKEYmedia that the Special Master's

construction requires the expansion cue container to be interactively accessible by the end user. The
recommended construction requires only that cues can be inserted into and removed from the
container, not that the end user must perform the insertion and removal. This understanding is

perfectly consistent with the specification, which teaches that in embodiments where the container
is not interactively accessible, the container "may move or be manipulated only as shown in the

continuous play media stream." Id. col. 14 11. 51-53. In other words, the user may have nothing to
do with the cues appearing and disappearing from the screçn: "[b]y way of example, a person

interviewed may pull something [a cue] from their handbag [an expansion cue container] and it [the
cue] may be highlighted for possible expansion." Id. col. 14 11. 55-57.

The Court agrees with the Special Master's construction, and MONKEYmedia's objections
are OVERRULED.
5.

The indefmite claim terms

The Special Master recommended the following claim terms be construed as indefinite:
(1 )"calculating

the first terminus of the continuing segment by reference to a continuity link offset";

(2) "wherein determining whether said expansion segment cue has been selected further comprises

determining if the expansion cue container has been selected for visual display"; and
(3) "determining whether said expansion segment cue has been selected further comprises causing

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selection of at least one other expansion cue from the plurality of expansion cues if said expansion
segment cue has been selected." A discussion of each, and of the related term "continuity link

offset," follows.
Definiteness is to be evaluated from the perspective of someone skilled in the relevant art.

Nautilus v. Biosig Instruments Inc.,

134

S.

Ct. 2120, 2128

(2014).

In assessing definiteness, claims

are to be read in light of the patent's specification and prosecution history. Id. Definiteness is

measured from the viewpoint of a person skilled in the art at the time the patent was filed. Id.
Recently, in Nautilus, the Supreme Court changed the standard for indefiniteness. The previous
standard assessed definiteness based on whether the claims were "amenable to construction" or

"insolubly ambiguous." Id. at

2130.

The Court rejected these approaches because "it cannot be

sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains
on the understanding of a skilled artisan at the time of the patent application, not that of a court

viewing matterspost hoc." Id. (emphasis in original). Application of these standards "diminish[ed]
the definiteness requirement's public-notice function and foster[ed] the innovation-discouraging

'zone of uncertainty,' against which this Court has warned." Id. (internal citation omitted). In place

of the old standard, the Court adopted a new one: whether "[the] claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention." Id. at 2124.
i.

"calculating the first terminus of the continuing segment by reference to
a continuity link offset"/"continuity link offset"

The Special Master was correct in finding the phrase "calculating the first terminus of the

continuing segment by reference to a continuity link offset" renders Claim

-21-

35

indefinite. As

previously explained, the '158 Patent teaches segments with fixed, predetermined beginning and
ending termini that are defined by the content author, rather than determined during playback of
content in response to user interaction. The phrase is part of the following dependent limitation that
MONKEYmedia added to its claimed method during reexamination:
wherein the additional link from said expansion segment to said continuing segment
comprises calculating the first terminus of the continuing segment by reference to a
continuity link offset afler determining whether a content expansion is desired and
wherein playing said continuing segment begins at said first terminus of said
continuing segment.

'158 Patent, Reexam. Cert. col.

111.

54-60. The notion of "calculating" a segment during playback

and the idea a link between two segments is "comprise[d of]" a calculation are fundamentally

inconsistent with the claim language teaching that every segment of stored content has two known,
author-defined termini ("wherein each of said segments has a first terminus and a second terminus")
and that links are known, author-defined connections between specified segments of content (links
are "associated with" segments or are connections "from" one segment "to" another segment).
id. col. 1.

11.

See

22-23, 26-28, 36-37.

While the Court is mindful that claims should not be confined to the embodiments set forth

in the specification,

see Phillips,

415 F.3d at 1323, it is also true that the claims "must conform to

the invention as set forth in the remainder of the specification and the terms and phrases used in the
claims must find clear support or antecedent basis in the description so that the meaning of the terms
in the claims may be ascertainable by reference to the description."

37 C.F.R.

§

1.75(d)(l).

Tellingly, nowhere in its briefing does MONKEYmedia point to any language in the patent, save the

limitation (and its dependent claim) at issue, that explicates this phrase, only reiterating that the
Examiner found the new claims to be patentable.

See

-22-

Pl.'s Supp. Brief [#276] at 14-16, 19; Pl.'s

Resp. Defs.' Opening Brief [#286] at 7, 9; Pl.'s Post-Hr'g Brief [#297] at 13-14, 18; P1.'s Resp.

Defs.' Post-Hr'gBrief[#299] at2, 6-7; Objections [#303] at 7-9, 11. As Defendants note, however,
the Examiner explained its rationale for its finding with reference to the prior art: "A calculation of
a first terminus

of the continuing segment by reference to a continuity link offset is not taught or

suggested by the prior art currently of record in this proceeding. Claim 36 [issued Claim 35] is

accordingly held to be patentable." Defs.' Hr'g Ex. 73 at 93-94. Defendants have demonstrated the
concept of "calculating" a segment's terminus is inconsistent with the claimed invention as taught
in the remainder of the patent; given that inconsistency, Claim 35 is indefinite, as it "fail[s] to

inform, with reasonable certainty, those skilled in the art about the scope ofthe invention." Nautilus,
134 S. Ct. at 2124.

The Special Master was correct to find the above-quoted phrase renders Claim 35 (and
dependent Claim 36) indefinite. The term "continuity link offset," which appears only in Claim 35
(and by extension in dependent Claim 36) therefore need not be construed. Alternatively, the Court

adopts the Special Master's construction of the term. MONKEYmedia defines a "continuity link
offset" not as a point, but rather, as a numeric value; however, the only portion of the specification
that teaches the concept states that a link from one segment can go not to the first terminus of a

continuing segment, "but to landing offset 272 temporally located after first terminus 264." '158
Patent col. 17

11.

15-17. A linka predetermined connection between specified segmentscannot

connect a segment to a numeric value.
The Court agrees with the Special Master, and MONKEYmedia's objections are

OVERRULED.

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ii.

"wherein determining whether said expansion segment cue has been
selected further comprises determining if the expansion cue container has
been selected for visual display"

Defendants argue the Special Master was correct in finding this phrase indefinite because this

limitation, found in dependent Claim 38, recites an action necessary to practice Claim 37.
Specifically, Claim 37 recites "wherein playing said segments further comprises highlighting an

expansion segment cue" and "wherein said expansion segment cue is one of a plurality of expansion
cues in an expansion cue container." '158 Patent, Reexam. Cert., col. 211. 17-18,23-24. Because

"highlighting" a cue requires that cue, in Defendants' view, to be visually displayed, and because the
highlighted expansion segment cue is one of several within an expansion cue container, Defendants
reason Claim 37 already requires the expansion cue container to be visually displayed, rendering
Claim 38 indefinite. MONKEYmedia counters Claim 38 "is simply a further action that must be

performed when determining in Claim 37 whether the cue has been selected." Objections [#303]
at 11.

The Special Master was correct in finding this phrase renders the claim indefinite. Yet the

Court cannot agree with all of Defendants' reasoning, as "highlighting" is not limited to "visually

emphasizing"a cue could be highlighted using audio, for example. The problem arises with Claim
38's direction to "determin[eJ if the expansion cue container has been selected for visual display."
Expansion cue containers are necessarily visual, as they contemplate the insertion and removal of
cues.

See supra

section II.B .5. The cues contained within expansion cue containers must therefore

also be visually displayed. Thus, Claim 37's teaching "wherein said expansion segment cue is one

of a plurality of expansion cues in an expansion cue container" indicates the expansion segment cue

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is visually displayed within a visible expansion cue container. As such, Claim 38 is nonsensical:

the '158 Patent does not teach non-visually-displayed expansion cue containers.
The Court agrees with the Special Master's recommendation, and MONKEYmedia's

objections are OVERRULED.
iii.

"determining whether said expansion segment cue has been selected
further comprises causing selection of at least one other expansion cue
from the plurality of expansion cues if said expansion segment cue has
been selected"

Finally, the Court agrees with the Special Master's finding this phrase independently renders

Claim 39 indefinite. As Defendants correctly point out, this limitation is incoherent, as it makes
"determining whether an expansion segment cue has been selected" dependent upon whether ("if')
"said expansion segment cue has been selected." '158 Patent, Reexam. Cert. col. 2 11. 30-3 5. Even
if, as MONKEYmedia offers, this language could refer to selecting a second cue if the first cue has

been selected, MONKEYmedia points to nothing in the claim language or the specification which
might indicate as such to an ordinarily skilled artisan.

While the definiteness requirement

"recogniz[es] that absolute precision is unattainable," it also "mandates clarity" in communicating
the scope of the claimed invention. Nautilus, 134 5. Ct. at 2130. Given its apparent circularity, this

limitation is not successful in communicating with clarity the scope of the invention claimed by the

'158 Patent.
The Special Master was correct to find this phrase renders Claim 39 indefinite, and

MONKEYmedia' s objections are OVERRULED.

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Conclusion
MONKEYmedia's objections to the Special Master's recommended constructions are
OVERRULED, and the Special Master's recommended constructions are ACCEPTED AS
MODIFIED.
Accordingly:
IT IS ORDERED that Plaintiff MONKEYmedia's Objections [#303] are

OVERRULED; and
IT IS FiNALLY ORDERED that the Report and Recommendation of the Special

Master [#3 02] is ACCEPTED AS MODIFIED as set forth in this opinion.
SIGNED this the 10

Iay of August 2015.

SAM SPA
UNITED STATES DISTRICT JUDGE

319 533 rnarkrnan ord

bawpd