Collaborative Agreements, LLC v. Adobe Systems Incorporated et al

Filing 84

MEMORANDUM OPINION AND ORDER, ( Scheduling Conference set for 7/7/2015 09:30 AM before Judge Lee Yeakel,). Signed by Judge Lee Yeakel. (dm)

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

AUSTIN DIVISION
COLLABORATIVE AGREEMENTS, LLC,
D/B/A OUI AGREE,
PLAINTIFF,

23I5Y

12

il1:

§
§
§
§
§

CAUSE NO. A-14-CV-356-LY

§

ADOBE SYSTEMS INC.,
CITRIX SYSTEMS, INC., TIME
WARNER CABLE, INC. TIVO, INC.,
TIME WARNER CABLE
ENTERPRISES, LLC, TIME WARNER
CABLE TEXAS, LLC, TIME WARNER
CABLE INFORMATION SYSTEMS
(TEXAS), LLC. AND TIME WARNER
CABLE INFORMATION SERVICES
(TEXAS), LLC,
DEFENDANTS.

§

§
§

§
§
§
§
§
§
§
§

MEMORANDUM OPINION AND ORDER REGARDING
CLAIM CONSTRUCTION
Before the court in the above-styled and numbered cause are Plaintiff Collaborative

Agreements, LLC's ('Col1aborative") Opening Brief on Claim Construction filed January 23,
2015 (Clerk's Doe. No. 77);

Defendants1

Adobe Systems Inc., Citrix Systems, Inc., Time

Warner Cable. Inc., Tivo, Inc., Time Warner Cable Ent., LLC, Time Warner Cable Texas, LLC,
Time Warner Cable Information Systems (Texas), LLC, and Time Warner Cable Information
Services (Texas), LLC's Opening Claim Construction Brief filed January 23, 2015 (Clerk's Doe.
No. 76); Collaborative's Reply Claim Construction Brief filed February 13, 2015 (Clerk's Doe.
No. 80); Adobe's Reply Brief on Claim Construction filed February 13, 2015 (Clerk's Doe. No.

For the purposes of claim construction, all Defendants present consolidated briefing and
arguments. The court herein refers to Defendants collectively as "Adobe," except as otherwise
noted.

20

79); the parties' Joint Claim Construction Statement filed January 12, 2015 (Clerk's Doc. No.
75); and the claim-construction presentations of both parties.

The court held a claim-construction hearing on March 20, 2015.

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.

I.

Introduction
The court renders this memorandum opinion and order to construe the claims of U.S.

Patent No. 8,271,393 (the "'393 Patent").

Collaborative asserts claims against Adobe for

infringement of the '393 Patent. The '393 Patent generally relates to a system and method for
facilitating transactions between two or more parties by receiving electronic documents at a
server location from a client-communication device, locking the electronic documents against

future changes, and verifying the agreement of the parties to the electronic documents.

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.

2

The court construes patent claims without the aid of a jury. 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 bane) (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

patenf s prosecution history. Id. at 1314-17; 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. 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.

3

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.

Cooper Lfe Scis., 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 also serve as his own lexicographer and define a disputed term in

prosecuting a patent. Home Diagnostics Inc.
2004).

v.

Li/eScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir.

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.

Eng'g Inc.

v.

Omega

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, '1ess 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 'conc1usory, unsupported assertions by experts as to the definition of a claim

4

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.
v.

Bodenseewerk Perkin-Elmer GmbI-L 386 F.3d 1133, 1139 (Fed. Cir. 2004).

III.

Discussion

A.

New Matter Issue and Claim Construction

The 393 Patent claims priority to three provisional applications.

The earliest of these

was filed on April 2, 2002. Application for the '393 Patent itself was filed on November 1,

2011. Over the course of filing multiple continuations on the original provisional applications,

nearly two full columns have been added to the patent specification as compared to the

specification of the original application. The abstract is also entirely new to the '393 Patent.
This additional material was introduced by the patentee adding the text of independent claims

from the '393 Patent family's previously issued patents into the body of the specification as new

embodiments of the invention.
Adobe argues that the cumulative effect has been to introduce substantial new matter not

entitled to the April 2, 2002 priority date. Adobe contends that the '393 Patent claims should
have a priority date no earlier than November

1,

2011. Specifically, Adobe argues that the new

matter changed the scope of "identity validation." However, because the parties agreed to a
construction of "identity validation" at the claim-construction hearing, the court need not address
this contention.

5

Adobe also argues that the new matter changed the scope of disputed claim term

"electronic signature" and introduced a new ordering of steps that is inconsistent with the
original disclosure. The court concludes that these remaining issues are not determinative of the

proper construction of any disputed claim term. Whether the written description requirement is
met by the 393 Patent claims is a factual determination that need not be determined as a part of
the claim construction. See Bradford Co.

v.

Conteyor N Am., Inc., 603 F.3d 1262, 1268 (Fed.

Cir. 2010) ("Determination whether a priority document contains sufficient disclosure to comply

with the written description aspect of 35 U.S.C.

B.

§

112, first paragraph, is a question of fact.").

Agreed Constructions
At the claim-construction hearing, the parties agreed to the construction of one

previously disputed claim
term listed in the table

term.2

The court hereby adopts the agreed construction of the claim

below.3

Claim Term/Phrase

Adopted Agreed Construction

"identity validation"

"information that affirmatively identifies a party's
identity"

Claims: 1, 2, 3, 12, 13,15, 25,
26, 27, 36, 37, 38, 49, 50, 51,
60, 61, 62

The parties also agreed at the claim-construction hearing to drop contentions that the term "nontransitory computer program" is indefinite.
2

Throughout, the bolded terms indicate the court's adopted construction.
6

Disputed Terms

C.

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

parties' proposed constructions of the disputed terms.

Collaborative's Proposed

Claim TermlPhrase

.

Construction

1.
"attaching the identity
validation"

Claims:

1, 12,

"associating, adding, or linking
to the identity validation"

"appending the identity
validations from the first party
and the second party to the
accepted electronic document"

"an electronic sound, symbol, or
process attached to or logically
associated with an electronic
document adopted by a party to
sign the electronic document"

"electronic data that is (a)
received as part of the
registration information; (b)
created before the documents are
negotiated; and (c) indicates a
party has accepted certain
legally binding contractual terms
or conditions."

No construction is necessary.
Plain and ordinary meaning.

"no data may be added, deleted
or modified"

No construction is necessary.
Plain and ordinary meaning
applies,

"receiving one or more locked
electronic documents from the
first party client communications
device"

25, 36, 49, 60

2. "electronic signature"

Claims: 2, 3, 13, 15, 27, 37,
38, 50, 51, 61, 62

"locked against future
changes"
3.

Adobe s Proposed Construction

Claims: 1, 12, 25, 36, 49, 60

"receiving one or more
electronic documents
via a network from a client
communications device of a
first party to the transaction
wherein. all of the one or
more electronic documents
are locked against future
changes"
4.

.

.

.

Claims: 1,25, 49

.

.

5. "whenever an acceptance

of any of the one or more
electronic documents is
received by the server

No construction is necessary.
Plain and ordinary meaning
applies,

"each time an acceptance of any
of the electronic document is
received at the server computer
from the second party's client
communication device"

The preamble is limiting.

The preamble is not a claim
requirement or limitation.

No construction is necessary.
Plain and ordinary meaning
applies.

Subject to construction under 35
U.S.C. § 112 ¶ 6; Indefinite.

No construction is necessary.
Plain and ordinary meaning
applies.

Subject to construction under 35
U.S.C. § 112 ¶ 6; Indefinite.

No construction is necessary.
Plain and ordinary meaning
applies.

Indefinite.

computer from the client
communications device of
the second party"
Claims: 1, 12, 25, 36, 49, 60

"A non-transitory
computer readable medium
encoded with a computer
program for facilitating a
transaction between two or
more parties comprising"
6.

Claims: 25, 36
7. "code segment"

Claims 25, 36
8.

"a

non-transitory

computer readable medium
encoded with a computer

program

communicably

coupled to the processors to

Claims 49, 60
9.
"a non-transitory
computer readable medium
encoded with a computer

program

communicably

coupled to the processors to

Claims 49, 60

1.

"attaching the identity validation"
In all independent claims of the '393 Patent, after an acceptance of an electronic document

by the second party is received, the identity validation from both parties is "attach[ed]" to the

accepted electronic document. The identity validation itself may include usernames, passwords,
and electronic signatures.

Collaborative argues that the construction of "attaching" must be sufficiently inclusive to
allow for all of the possible ways these data types can be attached to an electronic document and
suggests "associating, adding, or linking." Adobe argues that Collaborative's construction is

unnecessarily broad because it replaces one word with three different words. Adobe also argues
that the identity validation must be "appended" to an electronic document because the document

itself is "locked against future changes."

According to Adobe, adding material to the locked

document would violate the locking limitation, thus

appending" is more appropriate than

"adding."
Central to the dispute regarding this limitation is whether the identity validation is a
separate file that must be appended to the locked electronic document without altering its

substance, or whether the identity validation information may be inserted directly into the locked
electronic document.
The claims and specification of the 393 Patent offer very little guidance on the meaning

of "attaching." Functionally, the attaching step serves to take the identity validation, which may
include a legally binding electronic signature, and create a deliverable electronic document that
may be provided to both parties to the transaction after agreement. '393 Patent, 17:56-58. This

function is also evident in the specification:

During the negotiation process, the system tracks one or more
changes to the electronic documents made by the parties in block
212. The system also locks all or part of the electronic documents
against future changes as they are agreed upon by the parties in
block 214. An electronic signature from each party that agrees to
the electronic document is attached to the electronic document in
block 216. Thereafter, signed electronic documents are provided to
each party in block 218 and the process is completed in block 220.
'393 Patent, 6:32-40 (emphasis added). The delivery of an electronic document to the respective
parties indicates that the document should be self-contained, in light of this, a construction that
defines merely "linking" or "associating" the document to the identity validation is overly broad.
The court finds nothing further in the patent that appears to define or to limit the meaning of

"attaching" to either appending or adding. Consequently, a person of ordinary skill in the art
would understand that the term encompasses both meanings.
The court construes "attaching the identity validation" to mean "adding the identity

validation into or appending the identity validation."

2. "electronic

signature"

Adobe argues that "electronic signature" as used in the claims of the '393 Patent is subject
to a prosecution-history disclaimer made during the prosecution of U.S. Patent No. 7,562,053 (the

"'053 Patent"), another patent in the '393 Patent family. Adobe's proposed construction is taken
directly from arguments made by the '053 Patent's prosecuting attorney in overcoming prior art:
In addition, the electronic signatures described in Thomas [US
2005/0240529 Al] are created only after the electronic document is
finalized. ([0081], lines 1-5). Henry [US 6,898,625] does not cure
this deficiency. In contrast, the electronic signatures used in the
present invention are: (a) purl ot ihe registration process; (b)
created beibre the documents are negotiated; and
legally
binding as a result of the party 's acceptance to the certain
contractual terms and conditions.
(cV)

10

Reply to Office Action of Oct. 16, 2007, '053 Patent, at 14 (emphasis added). This definition is

repeated throughout the prosecution history of the '053 patent.
Collaborative argues that Adobe's construction is taken out of context from the

prosecution history of a different set of claims and claim terms.

Specifically, Collaborative

argues that the patentee distinguished Thomas by pointing to the claim language surrounding and
affecting "electronic signature" in the context of the '053 Patent claims, not by defining

electronic signature itself.
Generally, a "disclaimer made during the prosecution of a patent application may operate
as a disclaimer with respect to later patents of the same family." Regents

of Univ. of Minn.

Med. Corp., 717 F.3d 929, 942 (Fed. Cir. 2013) (citing Verizon Servs. Corp.

v.

v.

AGA

Vonage Holdings

Corp., 503 F.3d 1295, 1306 (Fed. Cir. 2007)). However, such disclaimer is irrelevant to the
meaning of a limitation in a subsequent patent if the two patents do not share the same claim
language. ResQNet.com, Inc.

v.

Lansa, Inc., 346 F.3d 1374, 1383 (Fed. Cir. 2003).

The claims of the '053 Patent are substantially different from the claims of the '393
Patent. The court concludes that here the prosecution disclaimer does not apply. A review of the

relevant portions of Claim

1

of the '053 Patent makes this conclusion apparent:

A method for facilitating a transaction between two or more
parties comprising the steps of:
receiving registration information at a server computer via a
network from a client computer of each party to the transaction
wherein the registration information comprises a user name for the
party, a password for the party, and acceptance to certain
contractual terms and conditions that create g legally binding
electronic signature for the party and begins the transaction;
1.

whenever an acceptance of all portions of one of the posted
electronic documents is received by the server computer from the
client computers of all the parties, attaching the legally binding
electronic signature from each agreed party to the agreed to and
11

locked electronic document and providing the signed electronic
documents to each party.
'053 Patent, 16:47-17:12 (emphasis added). In the '053 Patent, the "legally binding electronic

signature" is received as a part of the registration information. This is the same "legally binding
electronic signature" that is eventually attached to the locked electronic document as indicated by
the definite article "the" in the last limitation of the above claim. Thus, the patentee's argument
during prosecution that the electronic signature is "used in

.

.

.

the registration process" adds no

new limitation to the '053 claims.
Similarly, Claim

1

of the '053 Patent requires that the "receiving registration information"

step actually "begins the transaction." If it begins the transaction, then it necessarily precedes any

negotiation of the relevant electronic document by the parties involved. Thus, the patentee's
prosecution arguments that the electronic signature be "created before the documents are

negotiated" also adds no new limitation to claim language.
In contrast, neither of these limitations are found within the claims of the '393 Patent.

Claim

1

exemplifies this difference in the claim language:
method for facilitating a transaction between two or more
parties comprising the steps of:
receiving one or more electronic documents and an identity
validation at a server computer via a network from a client
communications device of a first party to the transaction
1. A

receiving registration information at the server computer via
the network from the client communications device of a second
party to the transaction wherein the registration information
comprises the identity validation of the second party;

'393 Patent, 17:14-45 (emphasis added). Here, the identity validation of the first

partywhich

may comprise an electronic signature--is not necessarily received as a part of the registration

12

information. Only the second party's identity validation must be received as a part of registration
information.

Furthermore, there is no explicit ordering of steps that requires the identity

validation to be received

be/öre

the parties negotiate the electronic document as there is in the

'053 Patent claims. Because of the differences in the claim language between the two patents,

Adobe's prosecution disclaimer construction is rejected.

Collaborative's construction is essentially taken from the Electronic Signatures in Global
and National Commerce Act (the "ESIGN Act"):

The term "electronic signature" means an electronic sound, symbol,
or process, attached to or logically associated with a contract or
other record and executed or adopted by a person with the intent to
sign the record.
Pub. L. No. 106-229,

§

106(5), 114 Stat. 464, 472 (2000) (codified at 15 U.S.C.

§

7006(5)). It is

also used in Adobe's Terms-of-Use contract for the EchoSign products that have been accused of

infringement in this case:

"Electronic Signature" means the signature capability of the Ondemand Services, defined to include an electronic sound, symbol, or
process attached to or logically associated with an Electronic
Document and executed or adopted by a person with the intent to
sign the Electronic Document.
The '393 Patent specification requires only that the electronic signature be "legally

binding." 393 Patent, 6:1-4. Because a person having ordinary skill in the art would have been
aware of the legal requirements for an electronic signature as defined in the ESIGN Act, a

construction consistent with language from the ESIGN Act is appropriate in this case. The court
adopts the ESIGN Act's definition of "electronic signature" and modifies it to be consistent with
the language of the claims in the '393 Patent. Specifically, the court removes "attached to or

13

logically associated with a contract," changes "person" to "party," and changes "record" to

"electronic document."
The court concludes that "electronic signature" is construed to mean "an electronic

sound, symbol, or process executed or adopted by a party with intent to sign an electronic

document."

3. "locked against

future changes"

The parties dispute if a locked document may be modified in any way and how long the

electronic document must remain locked to be "locked against future changes." Adobe argues for
a construction that "no data may be added, deleted, or modified" to an electronic document that

has been locked against future changes. Collaborative argues that the term should be given its

plain and ordinary meaning and that Adobe's construction is overly narrow, precluding document

attribute updates, metadata changes, or any subsequent unlocking of the documents.
The parties' conflict may be resolved by comparing two subsets of claims within the '393

Patent. In one subset that includes Claims

1,

25, and 49, a locked electronic document is received

by the server from the first party to a transaction. The second party accepts the entire electronic

document and an identity validation from both parties is then attached to it.
In the second subset of claims that includes Claims 12, 36, and 60, the electronic

document from the first party includes locked portions and portions that may be edited.

The

unlocked portions may be changed, selected, or otherwise modified by the second party and these
changes are tracked. No claim limitation specifies how the first party must react to any such

modifications made by the second party. Once the second party accepts the electronic document,
an identity validation from both parties is attached to the electronic document.
14

The patent specification makes it clear that it is the substantive content of the electronic

document that is locked during the negotiation process described in the claims. In general, the
specification discloses a system and method for negotiating contracts with multiple terms in the
form of electronic documents. See e.g., '393 Patent, 6:l9-23 ("These electronic documents may
include a confidentiality agreement, term sheet, purchase agreement, asset purchase agreement,

development agreement, license agreement or any other type of document relating to the
transaction."). These terms or 'portions" may be rejected by the parties or agreed to and legally
adopted by electronic signature. The specification also describes a variety of different transaction
types that may be covered by the

patentall of

these types revolve around negotiating and

signing a contract. According to the specification, the content that is required to be locked is
limited to the negotiated content that defines the transaction between the parties. The extraneous

metadata and document attributes are not required to be locked against future changes.
With respect to the second dispute point, the 'Jocking" step performs the function of
preventing either party from modifying portions of an electronic document or an entire electronic
document. Neither the claims of the '393 Patent nor the specification contemplate unlocking of
an electronic document. In fact, the patent suggests that if the original party needs to make a

change to the document, then the entire negotiation process starts over with a new proposed
document:
The process, if broken down into discreet steps goes as follows.
Step 1. One party drafts a proposed contract or document.
Step 2. The proposed document is sent by some method to
the other party or parties. The party in step one may have
pre-signed the agreement indicating that if the party or parties in
step 2 were to approve the agreement unchanged, that their
signature was already in place.
Step 3. If the party or parties in step 2 agreed, they would
sign, or they may amend the agreement and return to the
15

originating party on step 1. If altered, clearly the original party
would not want the document to be signed without them first
reviewing it.
Step 4. This cycle continues until both parties agree, then
the document or contract would become binding.
A cycle of steps (2) and (3) may occur and several
permutations such as either or both parties wanting their counsel to
review the document, the idea of a proxy, or power of attorney
signature, and other permutations common to the process.
'393 Patent, 11:4-22 (emphasis added). Although this process may be divorced from the reality

of contract

negotiation,4

the claims do not cover any unlocking of an electronic document for any

purpose. Nonetheless, the court notes that the transition to the preamble of all claims in the '393

Patent is "comprising," leaving the claims open ended. Any accused infringing system or method
may include an unlocking step that is extraneous to the claims regardless of the present claim

limitations.

This makes any unlocking

stepand

the resulting duration of the "locked"

phaseirrelevant to the construction of "locked against future changes."
The court construes "locked against future changes" to mean "the negotiated content

defining the transaction may not be modified by either party."

'

The claims of the '393 Patent depart from the reality of contract negotiation in other ways as well.
The electronic document received from the first party includes locked portions and portions that may
be edited. These unlocked portions may be changed, selected, or otherwise modified by the second
party and are tracked by the system. Once the second party accepts the electronic document, an
identity validation from both parties is attached to the electronic document. However, there is no
claim limitation that requires the first party to review these modifications by the second party before
the electronic signature is attached to the document.
16

4.

"receiving one or more electronic documents

.

.

.

via a network from a client

communications device of a first party to the transaction wherein

. . .

all of the one or more

electronic documents are locked against future changes"
The parties dispute the plain and ordinary meaning of a claim limitation containing a

wherein clause requiring that a received electronic document be locked against future changes.
A method for facilitating a transaction between two or more
parties comprising the steps of:
1.

receiving one or more electronic documents and an identity
validation at a server computer via a network from a client
communications device of a first party to the transaction
wherein (a) the client communications device comprises a
computer, a workstation, a personal data assistant, an Internetenabled phone or a wireless communications device, (b) all of the
one or more electronic documents are locked against future
changes, and (c) the identity validation of the first party indicates
that the first party has agreed to the one or more electronic
documents

'393 Patent, 17:14-45 (emphasis added).
Collaborative argues that the claim language contemplates a method that allows for an
electronic document to be received from the parties to the transaction and locked subsequent to

that receipt. Specifically, the language "are locked against future changes" is present tense, not

past tense. Collaborative argues that had the patentee intended that the electronic document be
locked upon receipt, the language would have been past tense: "were locked against future

changes."
Figure 2 of the '393 Patent specification is a flow chart that supports the argument that the

patentee did contemplate such a sequence of events. The specification also describes a method
wherein an electronic document is received in an unlocked state and may later be locked by the

17

user or the system. '393 Patent, 6:17-3 6. However, the claim language at issue here mandates a

different result.
One of the "cardinal sins" of patent law is the importation of claim limitations into the

language of the claims. SciMed Li/è Sys., Inc.
1337, 1340 (Fed. Cir. 2001).

v.

Advanced Cardiovascular Sys., Inc., 242 F.3d

Here, however, the claims are actually narrower than the

specification may supportleaving Collaborative to argue for a broader interpretation than the
patentee actually claimed.

Collaborative's claim-construction argument ignores the wherein

clause that is part of the claim sentence. This clause limits the scope of the receiving step of the
claim to a situation wherein certain conditions are actually met. One of the three conditions of
the wherein clause in Claim

1

is that the electronic document be locked at the time it is received.

For this reason, the court rejects Collaborative's argument that the "plain and ordinary" meaning

contemplates receiving an unlocked document that is subsequently locked. The court will not

allow future argument in this case that the plain and ordinary meaning of this term allows for the
breadth of interpretation Collaborative seeks here. See Finjan Inc.

v.

Secure Computing Corp.,

626 F.3d 1197, 1206-07 (upholding claim construction of plain and ordinary meaning where

district court prevented expert from reconstruing term at trial).
On the other hand, Adobe's proposed construction attempts to rewrite and simplify claim

language that, although lengthy and complex, is capable of being readily understood by a person

of skill in the art. The court declines to rewrite the claim language in the way Adobe seeks.

18

The court therefore concludes that "receiving one or more electronic documents
network from a client communications device of a first party to the transaction wherein

... via a
.

all of

the one or more electronic documents are locked against future changes" should be given its plain

and ordinary meaning, with no further construction required.

5. "whenever an acceptance of any of

the one or more electronic documents is received by

the server computer from the client communications device of the second party"
The parties' dispute primarily focuses on the meaning of "whenever" and the frequency

with which the attaching step must follow the acceptance step.

"open" construction of the term.

Collaborative argues for an

Because of the claim transition "comprising," Collaborative

argues that the claim limitation is met if there is a single instance of the attaching step following
the acceptance step. Adobe's construction of the term requires that the attaching step follow the

acceptance step each and every time an acceptance is received in order to meet the claim
limitation.

Although Adobe's construction of "each time" accurately reflects a meaning of
"whenever," the claims themselves require a more nuanced construction than adopting Adobe's
construction in its entirety, The

'393

Patent contains six independent claims of three claim types:

two method claims, two apparatus claims, and two system claims. In all three types of claims, the

patentee appears to have relied heavily on the same claim language and adopted it to suit the
unique requirements for drafting each of these three claim types. Although this practice may
have facilitated claim drafting, the use of the term "whenever" in the method claims is

inconsistent with the use of the same term in the system and apparatus claims.

19

Consider "each time" in exemplary claims

1

and 25:

1. A method for facilitating a transaction between two or more
parties comprising the steps of:

providing the second party with access to the received
electronic documents; and
whenever an acceptance of any of the one or more
electronic documents is received by the server computer from the
client communications device o/ the second party, attaching the
identity validation from the first party and the second party to the
accepted one or more electronic documents.
'393 Patent, 17:14-45 (emphasis added).
25. A non-transitory computer readable medium encoded with a
computer program for facilitating a transaction between two or

more parties comprising:
a code segment for whenever an acceptance of any of the
one or more electronic documents is received by the server
computer from the client communications device of the second
party, attaching the identity validation from the first party and the
second party to the accepted one or more electronic documents.

'393 Patent, 19:47-20:12 (emphasis added).
In the method claims (Claims 1-24), whenever cannot mean "each time" because a

method claim is concerned only with individual and discreet steps. A method claim is practiced

if each of the steps of the method are performed even a single time. If "whenever" in the method
claims means "each time" or "every time," consistent with its plain and ordinary meaning, the

individual and discreet steps of the method could never be practiced. Each time an acceptance
was received, the method would require knowledge of some future acceptance to determine if the
method had actually been practiced at the present time. This construction is inconsistent with the
nature of method claims. A construction of "whenever" to mean simply "when" resolves this

conflict and is internally consistent with the language of the method claims.
20

On the other hand, a system or an apparatus claim can he configured so that the attaching

function follows the accepting function each time an acceptance is received. No future condition
or qualification need be met. A system configured to perform the attaching step only some of the

time an acceptance is received would not fall within the meaning of this claim language.
The court construes "whenever" in the method claims (Claims 1-24) to mean "when."
The court further construes the term whenever" in the system and apparatus claims (Claims

25-72) to mean "each time." The remainder of the disputed claim term is to be given its plain

and ordinary meaning, with no further construction required.

6. "A non-transitory computer readable medium encoded with a

computer program for

facilitating a transaction between two or more parties comprising"
All of the independent claims of the '393 Patent contain a preamble that lists "a

transaction." Collaborative argues that because "a transaction" forms the antecedent basis for
"the transaction" as used in the body of the claims, the preamble should be limiting.

Collaborative further argues that without a limiting preamble, the claims are "nonsensical."
Interestingly, Collaborative only makes this argument with respect to claims 25 and 36, even

though each independent claim in the patent suffers from the same antecedent-basis problem.
A "preamble limits the invention if it recites essential structure or steps, or if it is

'necessary to give life, meaning and vitality' to the claim." Catalina Mktg. Int'l, Inc.

v.

Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). If limitations in the

body of the claim derive antecedent basis from the preamble, then the preamble may act as a

necessary component of the claimed invention. See, e.g., Electro Sci. Indus.

v.

Dynamic Details,

Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002). On the other hand, "[i}f the body of the claim sets out
21

the complete invention," then the language of the preamble may be superfluous. Schumer

v.

Lab.

Computer Sys., Inc., 308 F.3d 1304, 1310,64 USPQ2d 1832, 1837 (Fed. Cir. 2002). A preamble
does not limit the claim when the claim body describes a structurally complete invention and the

preamble only states a purpose or an intended use for the invention. Catalina Mktg. 289 F.3d at
808.

Adobe argues that the second portion of the preamble, "for facilitating a transaction

between two or more parties," is a statement of intended use and cannot limit the claims even if it
were found in the body of the claim. Adobe contends that the antecedent-basis argument is

irrelevant, because "a transaction" is only stated within the context of an intended use statement.
Adobe also directs the court to Marrin

v.

GrfJmn, where the Court

of Appeals for the Federal

Circuit held that a patent preamble's "for permitting" language was not limiting, reasoning that

"the mere fact that a structural term in the preamble is part of the claim does not mean that the

preamble's statement of purpose or other description is also part of the claim." 599 F.3d 1290,
1295 (Fed. Cir. 2010).

The court finds Collaborative's position compelling.

Although the preamble is a

statement of intended use and ordinarily would not be limiting, it does contain the antecedent
basis for a necessary component of the claimed invention, "the transaction."

Claim 25, for

example, recites "a code segment for assigning the transaction to an account on the server

computer." This use of "transaction" requires the conclusion that "a transaction" in the preamble
is more than simply an intended use statement.

The preamble defines an actual element of the

claim that is necessary for understanding the scope of the claimed invention and practicing the
claims. Without an explicit transaction element, the claim cannot be practiced in its entirety.

Thus, the preamble is limiting.
22

Additionally, every independent claim in the

393 Patent suffers from the same

antecedent-basis problem. The court therefore concludes that the preambles in Claims 1, 12, 25,
36, 49, and 60 are limiting.

7. "code

segment"

Claims 25 through 48 claim an article of manufacture, namely a nontransitory computer-

readable medium encoded with a computer program. This computer-readable medium is encoded
with "code segments for" achieving specific functions such as receiving an electronic document
at a server computer, assigning a transaction to an account on the computer server, and providing

access to the electronic document.

Adobe argues that this use of the "code segment" language in the above claims invokes
the means-plus-function claiming technique, despite not specifically using the phrase "means

for." 35 U.S.C.

§

112 ¶ 6. Because the specification does not disclose algorithmic structure to

support the means-plus-function language in the claim, Adobe further argues, the claims are
indefinite.
When a patentee does not use the language "means for" in a claim limitation, there is a

presumption that Section 112 ¶ 6 does not apply. See Personalized Media Commc 'ns, LLC

v.

International Trade Commission, 161 F.3d 696, 703-04 (Fed. Cir. 1998). This presumption is "a
strong one that is not readily overcome." Lighting World, Inc.

F.3d 1354, 1358 (Fed. Cir. 2004).

v.

Birchwood Lighting, Inc., 382

However, the presumption may be overcome if "skilled

artisans, after reading the patent, would conclude that [the] claim limitation is so devoid of
structure that the drafter constructively engaged in means-plus-function claiming." Inventio AG
v.

ThyssenKrupp Elevator Arns. Corp., 649 F.3d 1350. 1357 (Fed. Cir. 2011).
23

Adobe's position is that "code segment" cannot be structural because a code segment is a
generic placeholder that does not perform the functions recited in the claims. Adobe contends

that code segment is a nonce word because there would be no difference in claimed structure if
the claims recited "a code segment means for" rather than "a code segment for."

Collaborative argues that code segment is sufficiently structural to a person of ordinary
skill in the art. In support of this. Collaborative directs the court to Microsoft Press Computer

Dictionary 3rd Edition (1997) that defines "code segment" as "[a] memory segment containing

program instructions" or "a named and segregated portion of a program's code typically
performing a specific class of operations." The same dictionary defines "segment" as "[a] section

of a program, that, when compiled, occupies a contiguous address space and that is usually
position independent." Collaborative further argues that a code segment is sufficiently structural
because it is part of a "non-transitory computer readable medium"a physical structure.
Collaborative also points to the function of a code segment in the claims as evidence of a
code segment's structure.

When executed, Collaborative argues, a code segment operates to

transmit and receive specific data between a server and a client computer within a network.
Collaborative contends that these functions signify to those skilled in the art that a code segment

itself is structural, even if described with a high degree of generality.
A claimed expression cannot be said to be devoid of structure

if it is used "in common

parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a

broad class of structures and even if the term identifies the structures by their function." Lighting
World, 382 F.3d at 1359-60; see also Williamson

v.

Citrix Online, LLC, 770 F.3d 1371, 1379

(Fed. Cir. 2014) (holding that "the word 'module' has understood dictionary meanings as

connoting either hardware or sojiware structure to those skilled in the computer arts") (emphasis
24

added); but see Robert Bosch, LLC

v.

Snap-On inc., 769 F.3d 1094, 1099-1101 (Fed. Cir. 2014)

(holding that claim terms "program recognition device" and "program loading device" are means-

plus-function terms because they fail to connote sufficient structure either in the form of hardware
or software).
Courts have consistently interpreted "software" and similar terms to have sufficient

structure so as to avoid an invocation of Section 112 ¶ 6. See Inventio AG

v.

ThyssenKrupp

Elevator Americas Corp., 649 F.3d 1350, 1359-60 (Fed. Cir. 2011) (overturning district court
finding that "computing unit" invoked ¶ 6); Trading Technologies Int'l, Inc.

v.

eSpeed, Inc., No.

04 C 5312. 2006 WI. 3147697, at *11 (N.D. Ill. Oct. 31. 2006) (finding "code" did not invoke

6

in a computer-readable medium claim) affd, 595 F.3d 1340 (Fed. Cir. 2010); WhitServe LLC

v.

GoDaddy.com, Inc., No. 3:11-CV-00948, 2014 WL 5668335, at *4 (D. Conn. Nov. 4, 2014)

(finding "software executing on said computer" did not invoke ¶ 6); RLIS, Inc.

v.

Allscripts

Healthcare Solutions, Inc., Nos. 3:12---CV--208, 3:12-CV-209, 2013 WL 3772472, at *14 (S.D.
Tex. July 16, 2013) (finding "computer system under software control," "computer executable

database software," "an editing software utility," "executable software," and "computer software"
did not invoke ¶ 6); Eolas Techs., Inc.

v.

Adobe 5ys., Inc., 810 F.Supp.2d 795, 810 (E.D. Tex.

2011) (finding "computer readable program code" did not invoke ¶ 6); Aloft Media, LLC

v.

Adobe

5ys., Inc., 570 F.Supp.2d 887, 898 (E.D. Tex. 2008) (finding "computer code" did not invoke ¶
6).

The recent Williamson case is strongly in favor of Collaborative's position that "code

segments" are structural. In Williamson, the Federal Circuit considered a patent claim covering a

"system for conducting distributed learning among a plurality of computer systems coupled to a
network." 770 F.3d at 1375. A limitation of the claim required "a distribuied learning control
25

module for

receiving communications transmitted between the presenter and the audience

member computer systems

.

.

.

." Id. In finding "module" to be sufficiently structural as to not

invoke ¶ 6, the Federal Circuit considered how a person of ordinary skill in the art would have

understood module, determined that module was a subpart of a definite structure, and examined

module's function in the context in the claims. Id, at l379-80.
First, the Federal Circuit reasoned that because module "has understood dictionary

meanings as connoting either hardware or software structure to those skilled in the computer
arts," the lower court erred by finding that the term "module" was entirely nonstructural. Id.
(emphasis added). The dictionary definitions for "module" cited by the court included "part of a
program that usually performs a particular function or related functions" and "self-contained

hardware or software component that interfaces with a larger system." Id. at 1379.
Second, the circuit considered the entire term, "distributed learning control module," in

the context of the claims. This "distributed learning control module" was claimed as a subpart of
a "distributed learning server," a definite physical structure. Id. at 1380.
Third, the circuit examined the function of the "distributed learning control module" as

described in the specification and claims.

Id.

The "distributed learning control module"

"receive[s] communications transmitted between the presenter and the audience member
computer systems," "relay[s] the communications to an intended receiving computing system,"

and "coordinat[es} the operation of the streaming data module." Id. These "interconnections and
intercommunications" supported the conclusion that "one of ordinary skill in the art would
understand the expression 'distributed learning control module' to connote structure." Id. Based
on these considerations, the court held that module would be understood by one of skill in the art

to be structural and patentee did not invoke Section 112 ¶ 6 by its use. Id.
26

Applying the approach taken in Williamson to this set of disputed claims, the court
concludes that the presumption against invoking Section 112 ¶ 6 by not using the language
"means for" stands intact. The patentee of the '393 Patent did not invoke Section 112 ¶ 6 with his
use of "code segment." The dictionary definitions cited by Collaborative suggest to the court that
a person of ordinary skill in the art would most likely understand code segment to connote

software structure. "Code segment" refers to a portion of a larger program that, similar to a
module, has a specific purpose or performs a specific class of operations. Each code segment is
also claimed as a part of a nontransitory computer-readable medium. A code segment occupies

physical memory space on a computer-readable medium. Lastly, a code segment in the '393
Patent functions to receive

and process

data,

similar to

the "interconnections

and

intercommunications" function of "module" in Williamson.
The court construes "code segment" to not invoke 35 U.S.C. § 112

¶ 6.

The court further

concludes that the claims containing "code segment" are not indefinite.

8. "a

non-transitory computer readable medium encoded with a computer protram

communicably coupled to the processors to

. .

in an argument similar to the "code segment" dispute above, Adobe argues that claims 49
through 72 (the "systems claims") also lack sufficient structure to avoid invoking Section 112 ¶ 6.
Collaborative similarly relies on the presumption against invoking Section 112 ¶ 6 by not having
used "means for" language in the claim.

Adobe's argument is slightly different than its argument regarding the code-segment
language, because Adobe does not point to a particular nonce word used in place of "means for."
Instead, Adobe's position is that the entire reference to a nontransitory computer-readable
27

medium is a nonce word and that such a generic reference cannot support the operative functions

of the systems claims.
Collaborative is also in a slightly different position because it cannot rely on the software
structure inherent in the code-segment language because it is not used in the systems claims.

Nevertheless, the result is the same. The '393 Patent's systems claims are essentially a
method carried out on an apparatus by a computer-implemented software code contained on a
storage device as in the code-segment claims. This is a standard claiming technique that has been

repeatedly upheld as definite. See e.g., Netscape Commc 'ns Corp.

v.

ValueClick, Inc., 684 F.

Supp. 2d 699, 722 (E.D. Va. Jan. 29, 2010) (finding that claimed computer systems with

processors and computer-readable medium encoded with instructions for performing a method
were not indefinite); SmartPhone Technologies LLC

v.

HTC Corp., No. 6:l0-CV-580, 2013 WL

1136972, at *14 (E.D. Tex. Mar. 18, 2013) (finding similarly structured claims definite).

The systems claims in the '393 Patent recite a network interface, processors, and storage
devices, and incorporate a computer readable medium encoded with instructions. This computer-

readable medium is essentially the same as the computer-readable mediums of claims 25 and 36
except for the lack of the "code segment" term. Similar to the argument about the previous term,
the computer-readable medium can refer to both software structure and physical structure as a
part of an article of manufacture.

Both are "structural" enough to maintain the presumption

against means-plus-function claiming.

28

The court construes "a non-transitory computer readable medium encoded with a

computer program communicably coupled to the processors
6.

.

.

." to not invoke 35 U.S.C. § 112

¶

The court further concludes that the claims containing "a non-transitory computer readable

medium encoded with a computer program communicably coupled to the processors

.

.

." are not

indefinite.

9. antecedent basis of "server

computer" in systems claims

Adobe argues the term "server computer" used in the systems claims lacks antecedent
basis and renders the systems claims indefinite. Adobe contends that even if the antecedent-basis

problem were corrected by replacing "the" with "a," the claims are still indefinite because there is
no way to determine what "the server computer" refers to within the claim. According to Adobe,
it is not clear whether "the server computer" is the system that is the subject of the entire claim or

whether there is an external server computer outside the claimed system with which the system is
communicating. Thus, Adobe argues that because there is no way to tell the scope of the claims
with reasonable certainty, the systems claims are invalid under IVàutilus, Inc.

Biosig

v.

Instruments, Inc.. 134 S.Ct. 2120 (2014).

Collaborative argues that distributed computing systems are common and would be

known to persons of ordinary skill in the art. Collaborative urges that the lack of antecedent basis

for "server computer" does not necessarily render the claim indefinite because a person of
ordinary skill in the art would understand that a server computer would necessarily be a part of a
distributed computing system.
Courts generally address indefiniteness during claim construction. Praxair, Inc.

v.

Atmi,

Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). The claims of a patent must "particularly pointli] out
29

and distinctly claim[] the subject matter which the applicant regards as his invention." 35
§

112, ¶ 2. Specifically, "a patent is invalid for indefiniteness

U.s.c.

if its claims, read in light of the

patent's specification and prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention."

Nautilus, Inc.

v.

134

Biosig Instruments, Inc.,

5.Ct. 2120, 2123 (2014).
Two competing interpretations of the claims are contemplated by Collaborative and

Adobe. In one interpretation, the system and server computer are different devices. This is a

problematic reading of the claims because the only other "system" with which a server computer

communicates, as contemplated by the '393 Patent claims and specification, is a client device, not
another server computer or system.

See

'393 Patent, Figure

1,

5:33-57. The patent does not

disclose any knowledge or reference to the "cloud computing" networks mentioned by

Collaborative in its briefing. A reading of the claims that requires such knowledge, if it existed in
2002, might well be within the knowledge of one of ordinary skill in the art. However, such a

reading would also render the claim invalid for lack of written description. This interpretation of
the claims is untenable and the court rejects it.
In the second interpretation, the systems claims of the '393 Patent only contemplate one

server computer, which is itself the claimed "system" of claims 49 and 60. Contrary to Adobe's

arguments, this reading of the claims, while needlessly self-referential, does not present any
difficulties of continuity. An examination of Claim 49 demonstrates this: The system of Claim
49 includes a network interface, processors, and a nontransitory computer-readable medium. "A

system" is coupled to the processors to "receive registration information at the server computer
via the network from the client communications device of a second party to the transaction.

.

.

Replacing "the server computer" with "the system" clarifies that the system itself is the device
30

that is receiving the registration information via the network interface.

"A system" is now

coupled to the processors to "receive registration information at the system via the network from
the client communications device of a second party to the transaction.

.

.

."

No other server

computer is involved; the system is simply configured to receive registration information.

Another potential problem Adobe raises is resolved by the latter interpretation. In Claim
49, the system "receives one or more electronic documents" and subsequently "post[s] the

received electronic documents to the account on the server computer." Adobe argues there is no
way to know the structural relationship between the receiving system and the posting server

computer. However, if they are the same system, the structural relation is clear.
Reading the system and server computer as synonymous is also supported by independent
Claims

1, 12,

25, and 36. In each of these claims, there is only a single server computer that

interacts with a client-communication device and the same server computer performs all other
functions recited in the claims. Given the similarities between the systems claims and rest of the
claims in the '393 Patent, a person of ordinary skill in the art would understand that "a system"

and "the server computer" are synonymous references.

Accordingly, the court concludes that the antecedent basis of "the server computer" in
Claims 49-72 is found in the

'A

system" language of the preambles. The court further concludes

that the system claims are not indefinite.

31

D.

Summary Table ofAdoptedAgreed and Disputed Terms

Claim Term/Phrase

"identity validation"

Court s Construction

"information that affirmatively identifies a
party's identity"

Claims: 1, 2, 3, 12, 13,15, 25, 26,
27, 36, 37, 38, 49, 50, 51, 60, 61,
62

"attaching the identity validation"
Claims:

1, 12,

"adding the identity validation into or
appending the identity validation"

25, 36, 49, 60

"electronic signature"
Claims: 2, 3, 13, 15, 27, 37, 38,
50, 51, 61, 62

"locked against future changes"

"an electronic sound, symbol, or process
executed or adopted by a party with intent to
sign an electronic document."

"the negotiated content defining the transaction
may not be modified by either party"

Claims: 1, 12, 25, 36, 49, 60

"receiving one or more electronic
documents
via a network from
a client communications device of
a first party to the transaction
wherein
all of the one or more
electronic documents are locked
against future changes"
.

Claims:

1,

.

Plain and ordinary meaning.

.

25,49

32

"whenever an acceptance of any of
the one or more electronic
documents is received by the
server computer from the client
communications device of the
second party"
Claims:

1, 12,

1, 12,

1

and 12 means "when"

"whenever" in Claims 25, 36, 49, and 60 means
"each time"
Plain and ordinary meaning as to the rest of the
claim language.

25, 36, 49, 60

"A non-transitory computer
readable medium encoded with a
computer program for facilitating
a transaction between two or more
parties comprising"
Claims:

"whenever" in Claims

The preamble is limiting.

25, 36, 49, 60

Does not invoke 35 U.S.C.

"code segment"

§

112 ¶ 6; not

§

112 ¶ 6; not

indefinite.
Claims 25, 36

"a

non-transitory

computer

readable medium encoded with a
computer program communicably
coupled to the processors to

Does not invoke 35 U.S.C.

indefinite.

Claims 49, 60

"a

non-transitory

computer

Not indefinite.

readable medium encoded with a
computer program communicably
coupled to the processors to
Claims 49, 60

33

IV.

Conclusion
For the above reasons, the court construes the disputed 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

July 7, 2015, 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 July 7, 2015 conference.

SIGNED thisj

day of May, 2015.

UTED

STA

S

DIS

ICT JUDGE