Martha Stewart Living Omnimedia Inc v. Lodsys Group LLC

Filing 1

COMPLAINT with Jury Demand; against Lodsys Group LLC by MARTHA STEWART LIVING OMNIMEDIA INC. ( Filing Fee PAID $400 receipt number 0757-1761952) (Attachments: # 1 Exhibit A U.S. Patent #5,999,908, # 2 Exhibit B U.S. Patent #7,133,834, # 3 Exhibit C U.S. Patent #7,222,078, # 4 Exhibit D U.S. Patent #7,620,565, # 5 Exhibit E July 15, 2011 Lodsys Letter, # 6 Exhibit F July 22, 2013 Burns Email, # 7 Exhibit G August 8, 2013 Burns Email, # 8 Exhibit H August 23, 2013 Burns Email, # 9 Exhibit I September 10, 2013 Burns Email, # 10 Exhibit J September 18, 2013 MSLO Email, # 11 Summons, # 12 Civil Cover Sheet)

Lodsys Group, LLC 
Subject to Federal Rule of Evidence 408,

July [TBD], 2013
Ms. Vanessa Soman
Martha Stewart Living Omnimedia, Inc.
601 West 26th Street
New York, NY 10001
Re:

Patent Sub-License Agreement between IPMG AG and Martha Stewart
Living Omnimedia, Inc.

Dear Ms. Soman,
I am writing in response to Martha Stewart Living Omnimedia, Inc.’s (“MSLO”) request
for information upon which MSLO will rely as an inducement to enter into the Patent SubLicense Agreement accepted and executed concurrently herewith between MSLO and IPMG AG
(“IPMG”) who has been retained by Lodsys Group LLC (“Lodsys”) to conduct non-litigation
licensing activities. In this regard, Lodsys represents and warrants that: (i) Lodsys owns the
Licensed Patents and has the rights to authorize IPMG to grant all license, release and other
rights granted to MSLO in the Agreement, and has, in fact, authorized IPMG to do so; (ii)
Lodsys has not granted an exclusive license to any third-parties to the Licensed Patents; (iii)
Lodsys has not assigned or transferred any interest in the Licensed Patents, including the right to
make claims of infringement or to commence or prosecute patent infringement actions or other
similar actions, to any third-party; (iv) the Licensed Patents constitute all the patents and patent
applications that Lodsys owns or has right to license; and (v) IPMG has the right to extend the
representations and warranties made on behalf of Lodsys in the Agreement. Lodsys further
confirms that it fully, irrevocably and unconditionally releases, acquits and forever discharges,
and covenants not to sue Licensee, any Licensee Subsidiary or any of their respective officers,
directors, agents, employees, attorneys, successors, heirs or assigns from any and all causes of
action, claims or demands, suits, liabilities, losses, damages, rights, obligations, duties, attorney’s
fees, court costs, or any other form of claim or compensation, whatsoever, in law or in equity,
whether known or unknown, suspected or unsuspected to exist, now existing, or later acquired
arising out of or based on any of the Licensed Uses. This letter shall be treated as Confidential
Information with obligations to hold in confidence consistent with those in the concurrently
executed Agreement.
Defined terms used herein shall have the meanings attributed to them in the Patent SubLicense Agreement.
Sincerely,
LODSYS GROUP LLC
By: ________________________________
Print Name: _________________________
Title: _______________________________
505 East Travis Street | Suite 207 | Marshall TX 75670 | www.lodsys.com 

PATENT SUB-LICENSE AGREEMENT
This PATENT SUB-LICENSE AGREEMENT (this “Agreement”) is entered into by and
between IPMG AG, a Swiss Corporation, with an office at Grabenstrasse 25, 6340 Baar, Switzerland
(“Sub-Licensor”), and Martha Stewart Living Omnimedia, Inc., a Delaware corporation with an
office at 601 West 26th Street, New York, NY (“Licensee”). Sub-Licensor and Licensee shall be
referred to herein collectively as the “Parties,” and individually as a “Party.”
BACKGROUND
WHEREAS, Licensor is the owner of the Licensed Patents (as defined in Section 1.2 below)
and has entered into a license with Sub-Licensor that grants Sub-Licensor the right to grant the sublicense as expressed in this Agreement to Licensee and Sub-Licensor desires to grant this sub-license
for certain Licensed Uses (as defined in Section 1.3 below) under the claims of the Licensed Patents
to Licensee.
WHEREAS, Licensee desires to obtain a release and sub-license from Sub-Licensor under
the claims of the Licensed Patents for the Licensed Uses.
NOW, THEREFORE, in consideration of the above premises and the mutual covenants of the
Parties as set forth herein, Sub-Licensor and Licensee, intending to be legally bound, agree as
follows:
1.

DEFINITIONS

In addition to the terms defined elsewhere in this Agreement, as used in this Agreement:
1.1
“Effective Date” means the date this Agreement is deemed to be in full force and effect and
such date is identified in the signature block at the end of the Agreement, or if no date is provided
therein the Effective Date shall be the date signed by the last Party to sign the Agreement.
1.2
“Licensed Patents” means (i) United States Patents Nos. 5,999,908, 7,133,834,
7,222,078, and 7,620,565; (ii) all patents or patent applications claiming priority from any of the
United States Patents listed in Section 1.2 (i); (iii) all foreign counterparts, reissues,
reexaminations, extensions, continuations, continuations in part, continuing prosecution
applications, and divisions of any of the patents and patent applications covered in Section 1.2(i)
and 1.2(ii); and (iv) any other patents and/or patent applications that are currently owned, or later
acquired by, Licensor.
1.3
“Licensed Uses" means the manufacture, use, sale or offering for sale (either direct
or through a reseller), importation, and exportation of Licensee's products or services by
Licensee, any Licensee Subsidiaries, or Customers, including but not limited to any use
of such products or services in conjunction with other technology or products, whether on
a website, mobile device or other medium.

1.4
"Licensee Subsidiary" means any entity that Licensee controls. For purposes of this
definition, "controls" means: (a) the possession of voting shares or other voting securities, ownership
or control of fifty percent (50%) or more of the outstanding shares or securities entitled to vote for the
election of directors or similar managing authority of such entity; or (b) ownership or control of fifty
percent (50%) or more of the ownership interests that represent the power to direct the management
and policies of such entity. An entity shall be deemed to be a Licensee Subsidiary under this
Agreement only so long as all the requirements of being a Licensee Subsidiary are met.
1.5

“Licensor” means Lodsys Group LLC, a Texas Limited Liability Company.

1.6
“Territory” means all jurisdictions in which Licensor has now, or at any time during the term
of this Agreement, valid and enforceable patent rights.

1.7
“Customers" means any person or entity that has used, is currently using, or begins use at any
time after the Effective Date, any products or services provided by Licensee or a Licensee Subsidiary.
1.8
“End Users” means any person who has used, currently uses, or may use in the future any
products or services provided to it by a Customer.
2.

LICENSE

2.1
Grant of Sub-License. Upon payment pursuant to Section 4.1, Sub-Licensor on
behalf of itself and its successors and assigns hereby grants to Licensee and Licensee
Subsidiaries a non-exclusive, non-transferable (subject to Section 10.1), non-sublicensable
(subject to Section 5.3), fully paid-up irrevocable and perpetual license under the Licensed
Patents solely for the Licensed Uses in the Territory. Such license may be exercised by third
parties only on behalf and for the benefit of Licensee, a Licensee Subsidiary or Customers,
for their Licensed Uses. The grant of this sub-license extends to Licensee's and Licensee
Subsidiaries' Customers solely with respect to products and services provided by Licensee or
a Licensee Subsidiary to those Customers and such Customers' use thereof, and no other
rights with respect to the Licensed Patents are hereby granted to any third party including
any Customer.
3.

RELEASES

3.1
Releases by Sub-Licensor and Licensor. Upon full and complete payment of the amounts
payable in subsection 4.1, Sub-Licensor, on behalf of itself, its successors and assigns, and Licensor
hereby fully, irrevocably and unconditionally releases, acquits and discharges Licensee and any
Licensee Subsidiary and their respective Customers, End Users, officers, directors, agents,
employees, attorneys, successors, and assigns (to the extent this Agreement is permitted to be
assigned under Section 10.1 herein), from any and all causes of action, claims or demands, liabilities,
losses, damages, attorney’s fees, court costs, or any other form of claim or compensation, known or
unknown, arising out of or based on any of the Licensed Uses on or before the Effective Date
(collectively, “Sub-Licensor and Licensor Released Claims”). Notwithstanding the foregoing, this
Section 3.1 shall not apply to any causes of action arising out of the breach of this Agreement by
Licensee or third-party claims that are not related to the Sub-Licensor and Licensor Released Claims.
Sub-Licensor hereby represents and warrants that it has the authority under an agreement with
Licensor to extend the releases provided by Licensor in this Section 3. This release extends to
Customers solely with respect to products and services provided by Licensee or a Licensee
Subsidiary to those Customers and such Customers' use thereof, and no other releases are
hereby granted to any third party including any Customer.

3.2
Releases. The releases in this Agreement include an express, informed, knowing, and
voluntary waiver and relinquishment to the fullest extent permitted by law. In this connection, SubLicensor acknowledges that it (and/or Licensor) may have sustained damages, losses, costs, or
expenses which are presently unknown and unsuspected and that such damages, losses, costs, or
expenses as may have been sustained may give rise to additional damages, losses, costs, or expenses
in the future. Sub-Licensor hereto further acknowledges that it has negotiated this Agreement taking
into account presently unsuspected and unknown claims, counterclaims, causes of action, damages,
losses, costs, and expenses, and Sub-Licensor hereto voluntarily and with full knowledge of its
significance, expressly waives and relinquishes any and all rights it and Licensor may have under any
state or federal statute, rule or common law principle, in law or equity, relating to limitations on
general releases.
3.3
Unknown Claims. The Parties acknowledge that there is risk that after the Effective Date,
they (and/or Licensor) will discover, incur or suffer claims that are related to, or arise from facts
connected with, the matters released under Section 3.1 above, and arose in any way, in whole or in
part, before the Effective Date, and that were unknown or unanticipated as of the Effective Date
(collectively, the “Unknown Claims”). Nonetheless, to the extent that Licensee or Licensee
Subsidiary is located or has operations in California, to the full extent permitted by applicable law,
each of Sub-Licensor and Licensee hereby waives, relinquishes and discharges any and all Unknown
Claims, and waives, relinquishes and discharges any and all rights it (and/or Licensor) may have with
respect to any Unknown Claims, including any rights provided by California Civil Code § 1542 (and
similar provisions in other jurisdictions), which provides:
A general release does not extend to claims which the creditor
does not know or suspect to exist in his or her favor at the time of
executing the release, which if known by him or her must have
materially affected his or her settlement with the debtor.
4.

CONSIDERATION

4.1
Payment. In consideration of the license granted in Section 2.1, the release granted in
Section 3.1, and other terms and conditions of this Agreement, Licensee shall pay Sub-Licensor a
fully paid-up, non-refundable, lump-sum payment equal to $20,000. Payment”). Payment shall occur
within ten (10) calendar days of the Effective Date. Payment shall be by ACH payment to the
following account:

Currency: USD
Bank: Neue Aargauer Bank AG, Postfach 1512, CH-5610 Wohlen
Beneficiary: IPMG AG, Grabenstrasse 25, CH-6340 Baar
IBAN: CH59 0588 1029 7782 1200 0
BIC: AHHBCH22XXX

The Parties agree this is a settlement and no representation is made that the foregoing consideration
represents a reasonable royalty for the infringement alleged by Licensor.

5.

RESERVATION OF RIGHTS

5.1
Reserved Rights. Any and all rights not explicitly granted to Licensee in Sections 2.1 and
3.1 are expressly reserved by Sub-Licensor. No licenses to the Licensed Patents are granted by either
Sub-Licensor or Licensor to Licensee, or any other entity, either by implication, estoppel, or
otherwise, other than the licenses specifically enumerated and expressly provided in Section 2.1.
5.2
No Sublicense Rights. Except as expressly provided in Sections 5.3 and 10.1, the license
and releases granted to Licensee herein do not confer upon Licensee the right to grant or otherwise
transfer via sublicense any rights under the Licensed Patents to any other persons or entities for any
purpose.
5.3
Sublicense to Licensee Subsidiary. At its sole and absolute discretion, Licensee may
sublicense all or any portion of the rights set forth in paragraph 2.1 at any time, and from time to time,
to any Licensee Subsidiary on such terms as it deems fit, on the conditions that (i) the rights granted
under such sublicense apply to such Licensee Subsidiary only for such time as each such Licensee
Subsidiary remains a Licensee Subsidiary; (ii) no such sublicense by Licensee shall be further
sublicensable; and (iii) any such sublicense granted by Licensee shall terminate promptly upon the
termination of this Agreement or, with respect to the license granted under Section 2.1, upon
termination of such license.
6.

REPRESENTATIONS, WARRANTIES AND COVENANTS

6.1
Representations, Warranties and Covenants of Licensee. Licensee represents, warrants
and covenants that: (i) execution of this Agreement by Licensee and the performance of its
obligations hereunder will not violate any agreement, whether written or oral, to which Licensee is a
party; (ii) Licensee has the full legal authority necessary to enter into this Agreement and perform the
duties and obligations outlined herein; and (iii) neither Licensee nor any Licensee Subsidiary shall
contest or assist in the contest in any forum, including the Federal Courts, whether under 28 U.S.C.
§§ 2201 – 2202 or not, the United States Patent and Trademark Office, and/or the International Trade
Commission, that the Licensed Patents are invalid or unenforceable; provided, however, this covenant
shall not apply in the event that Licensor seeks to hold any Licensee or any Licensee Subsidiary liable
for infringement of the Licensed Patents.
6.2
Representations, Warranties and Covenants of Sub-Licensor. Sub-Licensor represents,
warrants and covenants that: (i) it has full authority to execute and deliver this Agreement and to
consummate the transactions contemplated hereby; (ii) it holds the entire rights necessary to grant this
sub-license to the Licensed Patents and (iii) the execution of this Agreement by Sub-Licensor and the
performance of its obligations hereunder will not violate any agreement, whether written or oral, to
which Sub-Licensor is a party. Sub-Licensor further represents and warrants that it has the right to
extend the representations and warranties provided in Section 6.3 to Licensee.

6.3
Further Representations, Warranties, and Covenants of Sub-Licensor. Sub-Licensor represents
and warrants that Licensor: (i) had the full authority to execute and deliver its license to SubLicensor, and that Licensor has not transferred or assigned any rights to bring any claim for patent
infringement, against Licensee or any Licensee Subsidiary for damages, or otherwise under the
Licensed Patents to either Sub-Licensor or to any third-party; and (ii) has not assigned or transferred
any interest in any claim released hereunder to Sub-Licensor or any third party.

6.4
No Further Representations or Warranties. EXCEPT AS OTHERWISE EXPRESSLY
SET FORTH IN THIS SECTION 6, NEITHER SUB-LICENSOR NOR LICENSOR MAKES ANY
REPRESENTATIONS OR WARRANTIES TO LICENSEE OF ANY KIND, EITHER EXPRESS
OR IMPLIED, WITH REGARD TO THE VALIDITY OR ENFORCEABILITY OF THE
LICENSED PATENTS AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH
RESPECT TO THE USE OR OTHER DISPOSITION BY LICENSEE, A LICENSEE
SUBSIDIARY, FOR THE LICENSED USES OF THE LICENSED PATENTS UNDER THIS
AGREEMENT. IN ADDITION, NEITHER SUB-LICENSOR NOR LICENSOR MAKES ANY
REPRESENTATION THAT USE OF THE LICENSED PATENTS WILL NOT INFRINGE,
DIRECTLY, CONTRIBUTORILY, OR BY INDUCEMENT, ANY PATENT, COPYRIGHT,
TRADEMARK OR OTHER PROPRIETARY RIGHT OF ANY THIRD PARTY.

7.

LIMITATION OF LIABILITY

7.1
Limitation of Liability. EXCEPT IN THE EVENT OF FRAUD, SUB-LICENSOR
AND/OR LICENSOR’S TOTAL CUMULATIVE LIABILITY UNDER THIS AGREEMENT
SHALL NOT EXCEED THE PAYMENT SET FORTH IN SECTION 4.1 OF THIS AGREEMENT
THAT IS ACTUALLY PAID BY LICENSEE AND RECEIVED BY SUB-LICENSOR. EXCEPT
IN THE EVENT OF FRAUD, LICENSEE’S TOTAL LIABILITY UNDER THIS AGREEMENT
SHALL NOT EXCEED THE PAYMENT SET FORTH IN SECTION 4.1 OF THIS AGREEMENT.
THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON POTENTIAL LIABILITIES
WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
7.2
Limitation on Consequential Damages. NEITHER PARTY NOR LICENSOR SHALL
HAVE ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT,
INCLUDING PASSIVE OR IMPUTED NEGLIGENCE AND STRICT LIABILITY OR
OTHERWISE), FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL DAMAGES OR
LOSS OF REVENUE, PROFIT, SAVINGS, OR BUSINESS ARISING FROM OR OTHERWISE
RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR ITS EMPLOYEES HAVE BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

8.

CONFIDENTIALITY

8.1. The financial terms of this Agreement (but not the existence of the Agreement) shall be regarded
as “Confidential Information.” Except as provided in Section 8.2 below, the Parties agree that they
shall not disclose any Confidential Information received from the other Party without prior written
consent of that other Party; provided, however, that each Party may disclose Confidential Information
to such Party’s fiduciary professionals, including its auditors, accountants, and attorneys, without
prior written consent, and each such disclosing Party shall ensure that the Confidential Information
remains confidential in accordance with this Section 8 with such fiduciary professionals.
Furthermore, Sub-Licensor may disclose the Confidential Information to Licensor who shall be
subject to the provisions of this Section 8 with respect to the use and maintenance of confidence of
such Confidential Information.
8.2
Confidential Information shall not include information that: (i) is or at any time becomes
publicly available through no fault of the receiving Party, its employees, consultants, or agents; (ii) is
received without restriction from a third party lawfully in possession of such information and lawfully
empowered to disclose such information; (iii) was rightfully in the possession of the receiving Party
without restriction prior to its disclosure by the disclosing Party; (iv) was independently developed by
employees, consultants, or agents of the receiving Party without access to such Confidential
Information.
Either party may disclose Confidential Information received from the other Party but only to the
extent that such a disclosure is required to be made pursuant to the order or requirement of a court,
administrative agency, or other governmental body; provided, however, that the receiving Party either
makes such a disclosure under a protective order that discloses the information only to outside
counsel and experts under an obligation of confidentiality, or provides prompt notice of such court
order or requirement to the disclosing Party to enable the disclosing Party, at its sole expense, to seek
a protective order or otherwise prevent or restrict such disclosure and that the receiving Party only
discloses such information as is necessary to comply with such order or requirement.
Licensor may also disclose Confidential Information on a CONFIDENTIAL-OUTSIDE COUNSEL
ONLY basis as contemplated by the Protective Order in the consolidated cases pending in the United
States District Court for the Eastern District of Texas titled as Lodsys, LLC, et al. v. Brother
International Corporation, et al., Case No. 2:11-cv-90 or any case consolidated therewith, in
response to existing discovery requests and as otherwise required by court order and the local rules in
those Texas actions without further notice to Licensee.
Either Party may disclose the terms of this Agreement to its attorneys and retained expert witnesses
with respect to any litigation in which that Party becomes involved, for use in such litigation, without
requiring prior consent from, or notice to, the disclosing Party.
9.

TERM

This Agreement shall commence as of the Effective Date, after execution of this Agreement
by all Parties, and shall continue until six years after the expiration of the last-to-expire Licensed
Patent or the expiration of any cause of action arising out of or related to the Licensed Patents,
whichever is later, unless earlier terminated as allowed by this Agreement.

10.

ASSIGNMENT

10.1. Assignment by Licensee. Except as provided in this Section 10.1, neither this Agreement,
nor any rights or obligations hereunder, may be assigned, encumbered, or otherwise transferred by
Licensee. Licensee may delegate any or all of its duties under this Agreement to one or more
Licensee Subsidiaries so long as Licensee remains responsible for, and guarantees the execution of,
those duties by such Licensee Subsidiaries under this Agreement. Licensee may further assign its
rights and responsibilities under this Agreement to a purchaser of all of the outstanding equity
interests or all or substantially all of the assets of Licensee with the provision that such an assignment
shall have the effect of limiting the scope of the license granted hereunder to only those products and
services offered for sale or use by Licensee at the time of the sale of equity or assets.
10.2
Assignment by Licensor and Sub-Licensor. Sub-Licensor may sell, assign, or otherwise
transfer this Agreement, or any rights hereunder to a third party, and Licensor may sell, assign, or
otherwise transfer the Licensed Patents or any rights thereunder to a third party, provided that: (i)
Licensor or Sub-Licensor, as appropriate, provides such third party with prior notice of the existence
of this Agreement; and (ii) such third party agrees to be bound by the terms and conditions, including
all licenses, releases, and covenants set forth in this Agreement. IF SUCH THIRD PARTY DOES
NOT AGREE TO BE BOUND BY ALL OF THE TERMS AND CONDITIONS OF THIS
AGREEMENT, THEN SUCH ASSIGNMENT OR TRANSFER SHALL BE NULL AND VOID.

11.

MISCELLANEOUS

11.1
No Agency. Nothing in this Agreement is intended or shall be deemed to constitute a
partnership, agency, employer-employee, or joint venture relationship between the Parties. Neither
Party assumes any liability of or has any authority to bind, or control the activities of, the other.
11.2
Entire Agreement, Amendments, and Waivers. This Agreement constitutes and contains
the entire agreement between the Parties, and supersedes any and all prior negotiations,
conversations, correspondence, understandings, and letters respecting the subject matter hereof. The
section headings contained in this Agreement are for reference purposes only and shall not affect in
any way the meaning or interpretation of this Agreement. This Agreement may only be amended or
modified by written document that is signed by both Parties. Failure by either Party to enforce any
term of this Agreement shall not be deemed a waiver of future enforcement of that or any other term
in this Agreement or any other agreement that may be in place between the Parties.
11.3
Severability. If any provision of this Agreement is found to be invalid or unenforceable, then
the remainder of this Agreement shall have full force and effect, and as to the invalid provision the
Parties shall attempt in good faith to negotiate a substitute for any such provision, which shall most
nearly approximate the intent of the Parties in entering into this Agreement.
11.4
Compliance With Laws. Notwithstanding anything contained in this Agreement to the
contrary, the obligations of the Parties shall be subject to all laws, present and future, of any
government having jurisdiction over the Parties and this transaction, and to orders, regulations,
directions or requests of any such government.

11.5
Counterparts; Electronic Signatures. This Agreement will preferably be executed using
electronic signatures, the sufficiency and enforceability of which both Parties agree upon by affixing
their electronic signatures to this Agreement. In the alternative, this Agreement may be executed in
counterparts, each of which shall be deemed an original, and all of which together constitute one and
the same instrument. If executed with physical signatures, Licensee shall execute and deliver to the
Sub-Licensor a copy of this Agreement in .pdf format by electronic mail. Sub-Licensor shall print a
copy of such signed .pdf document and countersign, scan, and return to Licensee a fully executed
copy in .pdf format. The Parties acknowledge that copies of this Agreement electronically signed, or
physically signed and transmitted via email as a .pdf file, photocopy, facsimile or other process of
complete and accurate reproduction and transmission shall be deemed original documents.
11.6
Status of Sub-Licensor and Survival. In accordance with the license granted by Licensor to
Sub-Licensor, the license granted under this Agreement shall survive any termination of the license
between Licensor and Sub-Licensor. Sub-Licensor represents and warrants that the License between
Licensor and Sub-Licensor is in full force and effect as of the time of execution of this Agreement.
All rights to make claims of infringement or to commence or prosecute patent infringement litigation
and other similar actions rests solely with Licensor. Sub-Licensor has no rights to enforce any patent
rights in the Licensed Patents against Licensee or any other party.
11.7
Bankruptcy. All rights and licenses granted under or pursuant to this Agreement are, and
shall otherwise be deemed to be, for purposes of Section 365(n) of the United States Bankruptcy
Code (the “Bankruptcy Code”), licenses of rights to “intellectual property” as defined under Section
101(35A) of the Bankruptcy Code. Sub-Licensor acknowledges that if Sub-Licensor or Licensor, as a
debtor in possession or a trustee-in-bankruptcy in a case under the Bankruptcy Code, rejects this
Agreement, Licensee may elect to retain its rights under this Agreement as provided in Section 365(n)
of the Bankruptcy Code. Sub-Licensor agrees to use all reasonable efforts to exercise a similar
provision in its license with Licensor in the event Licensor rejects its license agreement with SubLicensor as a debtor-in-possession or a trustee-in-bankruptcy in a case under the Bankruptcy Code.
In witness whereof, the Parties have executed this Patent License Agreement as of the
Effective Date.

SUB-LICENSOR:

LICENSEE:

IPMG, AG

Martha Stewart Living Omnimedia, Inc.

By:

By:

Name:

Name:

Title:

Title:

Date:

Date:

Effective Date:

Case 2:11-cv-00090-JRG Document 689

Filed 06/14/13 Page 1 of 102 PageID #: 13220

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LODSYS, LLC, et al.
Plaintiff,
v.
BROTHER INTERNATIONAL CORPORATION,
et al.
Defendants.

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§
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§
§
§
§

No. 2:11-cv-00090-JRG

MEMORANDUM OPINION AND ORDER

Before the court are Plaintiff’s Opening Claim Construction Brief (Dkt. No. 555),
Defendants’ Response Brief (Dkt. No. 578), Kaspersky Lab’s Response Claim Construction
Brief (Dkt. No. 590-1), and Plaintiff’s Reply Brief (Dkt. No. 591).
The Court held a hearing on April 30, 2012.

Case 2:11-cv-00090-JRG Document 689

Filed 06/14/13 Page 2 of 102 PageID #: 13221

Table of Contents
I. Introduction ..................................................................................................................................1
A.

Background ..........................................................................................................................1

B.

The Parties’ Submissions .....................................................................................................2

C.

Statutory Citations ...............................................................................................................2

II. Claim Construction Principles ....................................................................................................3
A.

Overview ..............................................................................................................................3

B.

The Claims ...........................................................................................................................4

C.

The Specification .................................................................................................................5

D.

The Prosecution History ......................................................................................................7

III. Agreed Constructions.................................................................................................................8
IV. Disputed Claim Terms ...............................................................................................................8
A.

Summary ..............................................................................................................................8

B.

Level of Ordinary Skill in the Art ......................................................................................10

C.

“units of a commodity” / “commodity” / “product” ..........................................................11
1.

Parties’ Proposed Constructions ................................................................................... 11

2.

The Core Disagreements ............................................................................................... 12

3.

Discussion ..................................................................................................................... 12
a) The Parties’ Arguments .................................................................................................12
b) Court’s Construction of “commodity” ..........................................................................14
c) Court’s Construction of “units of a commodity” ..........................................................24
d) Court’s Construction of “product” ................................................................................27

D.

“user interface” ..................................................................................................................30

1.

Parties’ Proposed Constructions ................................................................................... 30

2.

The Core Disagreement ................................................................................................ 30

3.

The Parties’ Arguments ................................................................................................ 30

4.

Discussion ..................................................................................................................... 32
i

Case 2:11-cv-00090-JRG Document 689

E.

Filed 06/14/13 Page 3 of 102 PageID #: 13222

“a memory within each of the units of the commodity” ....................................................34
1.

Parties’ Proposed Constructions ................................................................................... 34

2.

The Core Disagreement ................................................................................................ 35

3.

The Parties’ Arguments ................................................................................................ 35

4.

Discussion ..................................................................................................................... 37

F.

“user’s perception of the commodity” / “information regarding a use of the
product”..............................................................................................................................43
1.

Parties’ Proposed Constructions ................................................................................... 43

2.

The Core Disagreement ................................................................................................ 43

3.

The Parties’ Arguments ................................................................................................ 43

4.

Discussion ..................................................................................................................... 46

G.

“perception information” ...................................................................................................49

1.

Parties’ Proposed Constructions ................................................................................... 49

2.

The Parties’ Arguments ................................................................................................ 49

3.

Discussion ..................................................................................................................... 50

H.

“elicit” / “probe” ................................................................................................................54

1.

Parties’ Proposed Constructions ................................................................................... 54

2.

The Core Disagreement and the Parties’ Arguments .................................................... 54

3.

Discussion ..................................................................................................................... 56

I.

“component capable of managing the interactions of the users in different
locations and collecting the results of the interactions at the central location” .................57
1.

Parties’ Contentions ...................................................................................................... 57

2.

The Parties’ Arguments ................................................................................................ 57

3.

Discussion ..................................................................................................................... 58
a) Background ...................................................................................................................58
b) The Present Limitation ..................................................................................................61

J.

“two-way local interaction” ...............................................................................................67
1.

Parties’ Proposed Constructions ................................................................................... 67
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2.

Claim Language and the Parties’ Arguments ............................................................... 67

3.

Discussion ..................................................................................................................... 69

K.

“trigger event” ....................................................................................................................71

1.

Parties’ Proposed Constructions ................................................................................... 71

2.

Discussion ..................................................................................................................... 71

L.

“counter” / “increment a counter” / “if the counter exceeds a threshold” .........................72
1.

Parties’ Proposed Constructions ................................................................................... 72

2.

The Parties’ Arguments ................................................................................................ 72

3.

Discussion ..................................................................................................................... 78
a) “counter” .......................................................................................................................78
b) “increment a counter” ....................................................................................................82
c) “if the counter exceeds a threshold” ..............................................................................83

M. “forwarding the input” / “a priority code associated with the input” ................................84
1.

Parties’ Proposed Constructions ................................................................................... 84

2.

Claim Language in Context .......................................................................................... 85

3.

Discussion ..................................................................................................................... 85
a) “forwarding the input”...................................................................................................85
b) “a priority code associated with the input” ...................................................................86

N.

“passive probe” / “server” / “communication element” / “memory” ................................88

1.

Parties’ Proposed Constructions ................................................................................... 88

2.

Discussion ..................................................................................................................... 88

O.

“interaction scripts” / “carrying information about the value to users of using
the product” ........................................................................................................................89

1.

The Parties’ Proposed Constructions ............................................................................ 89

2.

Discussion ..................................................................................................................... 89
a) “interaction scripts” .......................................................................................................89
b) “carrying information about the value to users of using the product” ..........................93
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P.

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“a transaction for sale of a product or a service contract for the commodity” ..................95
1.

Parties’ Proposed Constructions ................................................................................... 95

2.

Claim Language in Context .......................................................................................... 95

3.

Discussion ..................................................................................................................... 96

V. Conclusion ................................................................................................................................97

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I.
Introduction
A. Background
The parties are Plaintiffs Lodsys, LLC and Lodsys Group, LLC (collectively, “Lodsys”
or “plaintiffs”), Brother International Corporation et al. and all defendants presently in the above
1

captioned action and in each of the cases consolidated with the above captioned action, except
Kaspersky Lab, Inc.,

2

(collectively, “defendants”), and Defendant Kaspersky Lab, Inc.

(“Kaspersky”) (collectively, plaintiffs, defendants, and Kaspersky are referred to as “the
parties”).
The three patents-in-suit are U.S. Patent Nos. 7,620,565 (“the ‘565 patent”), 7,222,078
(“the ‘078 patent”), and 5,999,908 (“the ‘908 patent”), although the ‘908 patent has not been
asserted against Kaspersky. The patents are in the same family and share substantially the same
3

specification.

All issued from continuation applications ultimately from application No.

08/243,638, filed May 16, 1994, now abandoned, which was a continuation-in-part of application
No. 07/926,333, filed August 6, 1992, now abandoned.
In general terms, the patents-in-suit are drawn to an interactive system that allows one to
obtain information from a user about the user’s “perception” of a “commodity.”
information may then be used in developing or improving the “commodities.”

That

The terms

“commodities” and “perception” are disputed terms.

1

The terms being addressed are for the following cases which have been consolidated for pretrial purposes: Case
Nos. 2:11-cv-00090-JRG, 2:11-cv-00272-JRG , 2:11-cv-00283-JRG; 2:12-cv-284-JRG, 2:12-cv-286-JRG, 2:12-cv287-JRG, 2:12-cv-288-JRG, 2:12-cv-289-JRG, 2:12-cv-290-JRG, 2:12-cv-291-JRG.
2

Kaspersky has not been accused of infringing the ‘908 patent. Hence, Kaspersky’s arguments are limited to those
claims of the ‘565 and ‘078 patents actually asserted against Kaspersky.
3

To the extent that there may be differences between the specifications, arising from the individual prosecution of
those applications, none of the parties has relied on, or pointed to, such differences for any substantive issue.

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B. The Parties’ Submissions
The parties have filed or provided the following submissions setting out their respective
proposed constructions and arguments:
Date Filed

Dkt. No.

Submission

January 11, 2013

505

Joint Claim Construction and Prehearing Statement (“JCCS [Dkt. No.
505]”)

February 19,
2013

555

Plaintiff’s Opening Claim Construction Brief (“Lodsys’ Brief [Dkt. No.
555]”)

March 18, 2013

578

Defendants’ Responsive Claim Construction Brief (“Defendants’
Response [Dkt. No. 578]”)

March 18, 2013

578-1

Kaspersky Lab’s Response Claim Construction Brief under P.R. 4-5(b)
(“Kaspersky’s Response [Dkt. No. 578-1]”)

March 29, 2013

590

Kaspersky’s Unopposed Motion to File Corrected Response Claim
Construction Brief and “[Corrected] (“Kaspersky’s Motion”) Kaspersky
Lab’s Response Claim Construction Brief under P.R. 4-5(b)
(“Kaspersky’s Corrected Response [Dkt. No. 590]”)

March 29, 2013

591

Plaintiff’s Reply Claim Construction Brief (“Lodsys’ Reply [Dkt. No.
591]”)

April 19, 2013

615

Notice of Filing of Joint Claim Construction Chart [per rule 4-5(d)]
(“JCCC [Dkt. No. 615] at”)

Submitted on CD
at the close of the
claim
construction
hearing

File histories for the patents-in-suit.

C. Statutory Citations
On September 16, 2011, President Obama signed into law the America Invents Act
(AIA), Pub. L. No. 112–29. Section 4, entitled “Inventor’s Oath or Declaration,” inter alia,
added subsection designations to the paragraphs of 35 U.S.C. § 112. Sec. 4(e), “Effective Date,”
provides: “The amendments made by this section shall take effect upon the expiration of the 1year period beginning on the date of the enactment of this Act and shall apply to any patent
application that is filed on or after that effective date.” Although § 112, as amended, is currently

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in the form of that statute, those amendments, largely non-substantive, would not be applicable
to the patents-in-suit.
Accordingly, the statutory citations herein – for § 112 and otherwise – are to the patent
statute – 35 U.S.C. – prior to the AIA amendments. For example, § 112(1) refers to § 112, para.
1, § 112(2) refers to § 112, para. 2, and § 112(6) refers to § 112, para. 6 of 35 U.S.C. without the
AIA amendments.
II.
Claim Construction Principles
A. Overview
A patent is a fully integrated written instrument. See Markman v. Westview Instruments,
Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). A patent, by
statute, must provide a written description of the invention, a disclosure that would enable one of
ordinary skill in the art to make and use the invention, and a disclosure of the best mode known
4

to the inventor for practicing the invention. See 35 U.S.C. § 112(1). A patent must also contain
claims “particularly pointing out and distinctly claiming the subject matter which the applicant
5

regards as his invention.” 35 U.S.C. § 112(2). The claims of a patent provide the measure of a
6

patentee’s right to exclude others from practicing the claimed invention. See 35 U.S.C. § 154.

4

35 U.S.C. § 112(1) provides:
The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated by
the inventor of carrying out his invention.

5

35 U.S.C. § 112(2) provides:
The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention.

6

35 U.S.C. § 154(a)(1) provides:
Every patent shall contain a short title of the invention and a grant to the patentee, his
heirs or assigns, of the right to exclude others from making, using, offering for sale, or
selling the invention throughout the United States or importing the invention into the

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B. The Claims
Primary claim construction principles are discussed and explained in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Among those are that “[i]t is a ‘bedrock
principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is
entitled the right to exclude.’ “ Id. at 1312, quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004), and citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). See also Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (claim construction “begins and ends”
with the actual words of the claims). “That principle has been recognized since at least 1836,
when Congress first required that the specification include a portion in which the inventor ‘shall
particularly specify and point out the part, improvement, or combination, which he claims as his
own invention or discovery.’ “Phillips, 415 F.3d at 1312.
“[T]he words of a claim ‘are generally given their ordinary and customary meaning,’
“and “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, i.e., as of the
effective filing date of the patent application.” Id. at 1313. “That starting point is based on the
well-settled understanding that inventors are typically persons skilled in the field of the invention
and that patents are addressed to and intended to be read by others of skill in the pertinent art.”
Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term
not only in the context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Id.
“In some cases, the ordinary meaning of claim language as understood by a person of
skill in the art may be readily apparent even to lay judges, and claim construction in such cases
involves little more than the application of the widely accepted meaning of commonly
understood words.” Id. at 1314. Thus, in some instances, “general purpose dictionaries may be

United States, and, if the invention is a process, of the right to exclude others from using,
offering for sale or selling throughout the United States, or importing into the United
States, products made by that process, referring to the specification for the particulars
thereof.

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helpful,”

but,

as

the

court

Filed 06/14/13 Page 10 of 102 PageID #: 13229

explained,

“[i]n

many

cases

that

give

rise

to

litigation * * * determining the ordinary and customary meaning of the claim requires
examination of terms that have a particular meaning in a field of art.”

Id. at 1314; see

Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1333 (Fed. Cir. 2008) (“when considered in the
context of and not divorced from the intrinsic evidence, there is nothing improper about
referencing [a] definition in correctly construing the claim.”). “Because the meaning of a claim
term as understood by persons of skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks to ‘those sources available to the
public that show what a person of skill in the art would have understood disputed claim language
to mean.’ “Id., quoting Innova/Pure Water, 381 F.3d at 1116. “ ‘Those sources include ‘the
words of the claims themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and
the state of the art.’ ” Phillips, 415 F.3d at 1314.
Thus, the claim construction process begins with the language used in the claims because
“[q]uite apart from the written description and the prosecution history, the claims themselves
provide substantial guidance as to the meaning of particular claim terms.” Id. “Other claims of
the patent in question, both asserted and unasserted, can also be valuable sources of
enlightenment as to the meaning of a claim term. Because claim terms are normally used
consistently throughout the patent, the usage of a term in one claim can often illuminate the
meaning of the same term in other claims.” Id. (citation omitted).
“Differences among claims can also be a useful guide in understanding the meaning of
particular claim terms.” Id. That is referred to as “claim differentiation.” “For example, the
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.” Id. at 1314-15.
C. The Specification
The specification nevertheless remains important in claim construction. “The claims, of
course, do not stand alone. Rather, they are part of ‘a fully integrated written instrument,’
consisting principally of a specification that concludes with the claims. For that reason, claims
‘must be read in view of the specification, of which they are a part.’ * * * [T]he specification ‘is
always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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single best guide to the meaning of a disputed term.’ Id. at 1315, quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d at 1576, 1582.
In particular, “[c]onsistent with that general principle,” the cases recognize that (1) “the
specification may reveal a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess.

In such cases, the inventor’s lexicography

governs,” and (2) “[i]n other cases, the specification may reveal an intentional disclaimer, or
disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the
correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as
dispositive.” Id. at 1316.
However, two claim construction principles are: (1) claims are read in light of the
specification, but (2) limitations from the specification must not be read into the claims. The line
between the two is not always clear. See Comark Communications, Inc. v. Harris Corp., 156
F.3d 1182, 1186-87 (Fed. Cir. 1998) (“[T]here is sometimes a fine line between reading a claim
in light of the specification, and reading a limitation into the claim from the specification.”) In
Phillips, the Federal Circuit advised that the “line between construing terms and importing
limitations can be discerned with reasonable certainty and predictability if the court’s focus
remains on understanding how a person of ordinary skill in the art would understand the claim
terms. For instance, although the specification often describes very specific embodiments of the
invention, we have repeatedly warned against confining the claims to those embodiments. In
particular, we have expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to that embodiment.
That is not just because section 112 of the Patent Act requires that the claims themselves set
forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely
would confine their definitions of terms to the exact representations depicted in the
embodiments.” Phillips, 415 F.3d at 1323 (citations omitted).
The Federal Circuit also advised: “[t]o avoid importing limitations from the specification
into the claims, it is important to keep in mind that the purposes of the specification are to teach
and enable those of skill in the art to make and use the invention and to provide a best mode for
doing so. One of the best ways to teach a person of ordinary skill in the art how to make and use
the invention is to provide an example of how to practice the invention in a particular case.
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Much of the time, upon reading the specification in that context, it will become clear whether the
patentee is setting out specific examples of the invention to accomplish those goals, or whether
the patentee instead intends for the claims and the embodiments in the specification to be strictly
coextensive. The manner in which the patentee uses a term within the specification and claims
usually will make the distinction apparent.” Id. at 1323 (citations omitted).
Nevertheless, the Federal Circuit has acknowledged that, “[i]n the end, there will still
remain some cases in which it will be hard to determine whether a person of skill in the art
would understand the embodiments to define the outer limits of the claim term or merely to be
exemplary in nature. While that task may present difficulties in some cases, we nonetheless
believe that attempting to resolve that problem in the context of the particular patent is likely to
capture the scope of the actual invention more accurately than either strictly limiting the scope of
the claims to the embodiments disclosed in the specification or divorcing the claim language
from the specification.” Id. at 1323-24.
D. The Prosecution History
The words in the claim may also be interpreted in light of the prosecution history, if in
evidence. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002).
“Like the specification, the prosecution history provides evidence of how the [United States
Patent and Trademark Office (“PTO”)] and the inventor understood the patent. Furthermore,
like the specification, the prosecution history was created by the patentee in attempting to
explain and obtain the patent.” Phillips, 415 F.3d at 1317 (citations omitted).
“Yet because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. “Nonetheless, the
prosecution history can 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 of prosecution, making the claim scope narrower than it would otherwise be.” Id.

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III.
Agreed Constructions
The parties have agreed that the following terms do not require construction:
•

“predefined plurality of trigger events”

•

“configured”

•

“results”

•

“central location”

•

[user interface configured to provide a] “medium”

JCCC [Dkt. No. 615] at 10.
IV.
Disputed Claim Terms
A. Summary
In brief summary:
Disputed Term/Phrase

Court’s Construction

“units of a commodity” / “commodity” /
“product”

“product or service.”

“user interface”

The Court declines to limit “user interface” to including
hardware. “User interface” may refer, in the context in
which the term is used, to hardware, software, or a
combination of hardware and software. No further
construction is necessary.

“a memory within each of the units of a
commodity”

“within” means “inside” but is not limited to “physically
located within”

“user[’s] perception of the commodity” /
“information regarding a use of the product”

A “user’s perception” or “information regarding a use of
the product” does not require “prior” or “actual” use. No
further construction is necessary.

“perception information”

“perception information” is amenable to construction,
namely “perception information based on inputs of the
users at the respective user-interfaces” reflects the “user
perceptions” “elicit[ed]” in the first limitation of claim 69
of the ‘078 patent and is not insolubly ambiguous. The
phrase does not render claim 69 indefinite under § 112(2).

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Disputed Term/Phrase

Court’s Construction

“elicit” / “probe”

The parties agree that “elicit” and “probe” exclude
“passively obtaining information without a user’s
involvement.” No further construction is necessary.

“component capable of managing the
interactions of the users in different
locations and collecting the results of the
interactions at the central location”

Claim does not use the word “means” and is therefore
entitled to a rebuttable, but strong, presumption that the
limitation should not be construed as a means-plusfunction limitation governed by § 112(6).
The Court concludes that the defendants and Kaspersky
have not overcome that presumption here. Accordingly,
the issue of whether the specification discloses
“corresponding structure” that is “clearly linked” to the
claimed function is not reached.

“two-way local interaction”

“interactions between the user and the unit at the user’s
location”

“trigger event”

“an event that initiates an action”

“counter” / “increment a counter” / “if the
counter exceeds a threshold”

“counter” means “a memory location for storing values
that represent the number of occurrences of an event.”
“increment a counter” means “update a counter to reflect
an increase in the number of occurrences of an event”
“if the counter exceeds a threshold” will be construed as
written - no further construction is necessary.

“forwarding the input” / “a priority code
associated with the input”

“forwarding the input” - the parties agree that “forward” is
distinct from “reply,” and means transmitting the input to
another location other than the original source of the input
- no further construction is necessary
“a priority code associated with the input” is construed as
“information that indicates the priority of the input”

“passive probe” / “server” / “communication Terms do not require construction
element” / “memory”
“interaction scripts” / “carrying information
about the value to users of using the
product”

“interaction scripts” refers to “interactive content” - the
claim is not insolubly ambiguous or invalid as indefinite
under § 112(2)
The actual claim language, “information about the value to
users of using the product,” is not necessarily limited to a
user’s “subjective opinion,” and defendants have not
provided a persuasive showing that the specification
necessitates so construing that claim language - no further

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Disputed Term/Phrase

Court’s Construction
construction is necessary.

“a transaction for sale of a product or a
service contract for the commodity”

No construction is necessary

The foregoing is a brief summary provided for the convenience of the parties, and does not
include the Court’s rationale, discussed below, in accepting or rejecting various constructions
and contentions advanced by the parties.
B. Level of Ordinary Skill in the Art
It is well established that patents are interpreted from the perspective of one of ordinary
skill in the art. See Phillips, 415 F.3d at 1313 (“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, i.e., as of the effective filing date of the patent application.”).
The Federal Circuit has advised that the “[f]actors that may be considered in determining
the level of skill in the art include: (1) the educational level of the inventors; (2) the type of
problems encountered in the art; (3) prior art solutions to those problems; (4) the rapidity with
which innovations are made; (5) sophistication of the technology; and (6) education level of
active workers in the field.” Env’tl Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693,
696 (Fed. Cir. 1983). “These factors are not exhaustive but are merely a guide to determining
the level of ordinary skill in the art.” Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254,
1256 (Fed. Cir. 2007).
None of the parties has proposed any particular level of ordinary skill in the art, or
presented evidence or argument on any of the foregoing factors. Accordingly, the Court can
only assume that the level of ordinary skill in the art is not disputed, and that no party contends
that the level of skill in the art is decisive or persuasive in the construction of any disputed term.

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C. “units of a commodity” / “commodity” / “product”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term

Claims

Lodsys

“units of a
commodity”

‘078:
1, 11,
27, 28,
38, 39,
60, 69,
74

“instances of a product
or a service”

“standalone physical
goods that are bought
or sold”

specific physical goods
used alone or in
connection with a
service

“commodity”

‘078:
1, 3-5,
10-13,
19, 22,
24, 25,
27, 28,
32, 33,
38, 39,
40, 44,
47, 50,
51, 52,
60, 63,
64, 67,
68, 69,
73, 74

This term should be
construed within the
entire phrase “units of a
commodity.”

“a standalone physical
good that is bought or
sold”

physical goods used
alone or in connection
with a service

‘565:
1, 5, 7,
8, 10,
13, 15,
17, 19,
20, 22,
25-28

No construction
necessary

“a standalone physical
good that is bought or
sold”

Claim 1, 5, 8, 10, 13: A
product is not the same
as the unit.

“product”

‘908:
37

Defendants

Kaspersky

If the Court determines
this term should be
separately construed:
“product or service”

If the court determines
this term should be
construed:

Claim 14, 17, 19, 20,
22, 25, 26: A product is
distinct from the device
that is performing the
method steps.

“item or service,
including hardware or
software, provided to a
user”

Claim 27 and 28: A
product is distinct from
the executable code and
from the computing
device.

JCCC [Dkt. No. 615] at 2-3

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2. The Core Disagreements
The core disagreements arising from the defendants’ proposed construction are whether
“commodity” and “product” must be a (1) “standalone,” (2) “physical good,” (3) “that is bought
or sold.” The core disagreements arising from Kaspersky’s proposed construction vis-à-vis
“units of a commodity” and a “commodity” are whether the “commodity must be “physical
goods used alone or in connection with a service,” i.e. “services” alone would not qualify as a
“commodity.” Kaspersky did not originally propose a construction for “commodity.” JCCS
[Dkt. No. 505] at 6. The core disagreements arising from Kaspersky’s proposed construction
vis-à-vis “product” are (1) for certain claims, whether a “product” may be “the same as the unit,”
(2) for other claims, whether a “product” must be distinct from the device that is performing the
method steps,” and (3) for yet other claims, whether a “product” must be “distinct from the
executable code and from the computing device.” Kaspersky did not originally propose a
construction for “product.” JCCS [Dkt. No. 505] at 12.
3. Discussion
a) The Parties’ Arguments
Lodsys urges that “[w]hile the patented invention undisputedly covers ‘standalone
physical goods,’ it is clear from the specification that it also covers other products and services,
such as software.” Lodsys’ Brief [Dkt. No. 555] at 10. Lodsys, for example, points to, inter alia,
the following portion of the specification:
For the purposes of this description, both the Products and the Services appropriate
for this invention will be referred to as Products. In many types of services it is
possible to include a CB-PD Module, such as in the rental of automobiles;
scheduling, during or after the delivery of travel services (such as an on-line system
to plan a trip, and during a stay at a resort); etc. Thus, many services might be
turned into Customer Directed Services (CDS) by means of this invention.
Lodsys’ Brief [Dkt. No. 555] at 10, quoting ‘078 patent, col. 16, lines 59-67 (emphasis by
Lodsys).
Lodsys also urges that those “products and services” are expressly disclosed as including
nonphysical software products. Lodsys notes that the ‘078 patent, inter alia, at col. 12, lines 2731, discloses that “[a] sixth example [of the invention] includes information industry products (a
software product, corporate application software, a corporate information system, a computer
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operating system, a computer, a computer peripheral data com
g
r
l,
mmunications devices, e
s
etc.).”
Lodsys’ Brief [Dkt. No. 555] at 11.
B
N
1
Lodsys furth urges that the speci
L
her
ification dis
scloses the invention in the conte of
n
ext
products and service that are not “bought or sold,” su as “educ
es
n
uch
cational and non-comme
ercial
[s],’ ” citing the ‘078 pat
tent, col. 13, lines 50-57 which disc
,
7,
closes in con
ntext:
‘product[

‘078 pate col. 13, lines 42-57.
ent,
l
The defendan urge that “commodity must be a “physical good” point
T
nts
y”
ting, inter al to
lia,
claim 1 calling for “a user inte
erface, whic is part o f each of th units of the commo
ch
he
odity”
(defendan emphasis) and “a memory with each of th units of t commod
nts’
m
hin
he
the
dity” (defend
dants’
emphasis Defenda
s).
ants urge th if a “com
hat
mmodity” is not a “phy
s
ysical good,” then the c
claim
becomes nonsensical because int
l
terfaces and memories c
cannot exist within an in
ntangible, or nonr
physical, item. Defe
,
endants’ Res
sponse [Dkt. No. 578] a 5. Defend
.
at
dants also po to depen
oint
ndent
claims th call for sp
hat
pecific physical items, e.g., claim 6, “telephone extension eq
e
quipment,” c
claim
8, “facsim equipm
mile
ment,” claim 11, “consum televisio equipmen Id. The defendants also
mer
on
nt.”
e
s
point to instances in the specific
i
cation that re to physi
efer
ical goods. Id. at 6. Ka
aspersky ma
akes a
t.
similar ar
rgument. Kaspersky’s Corrected Re
C
esponse [Dkt No. 590] a 6.
at
The defendan further po to, inter alia, The R
T
nts
oint
r
Random Hou Dictiona of the En
use
ary
nglish
Language 2074 (2d ed. 1987) de
e
efining “com
mmodity” as “an article of trade or c
commerce, e a
esp.
product as distinguish from a service.”
a
hed
s
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The defendants also urge that a “commodity” must be “bought or sold.” The defendants
note that the specification refers “to ‘[t]he Parties in this Invention’ as including, inter alia, the
customer, the vendor, and the distributor, in a context where the Vendor sells goods to the
Customer.” Defendants’ Response [Dkt. No. 578] at 7 citing ‘078 patent, col. 17, lines 1-28. The
defendants also rely on several dictionary definitions.
In response to Lodsys’ reference to educational and non-commercial products, the
defendants urge that the asserted claims “do not cover a non-physical educational curriculum
standing alone. Rather, to the extent that the education curriculum embodiment is claimed, it
would be within the context of a physical good (e.g., a computer) bought or sold that can utilize
that curriculum.” Defendants’ Response [Dkt. No. 578] at 7.
Lastly, the defendants rely on portions of the prosecution history in arguing that a
“commodity” must be a “stand alone” product. Id. at 8.
b) Court’s Construction of “commodity”
The term “commodity” does not appear in the specification of the ‘078 patent, other than
7

the abstract.

Rather, the specification describes the invention in the context of products and

services. Indeed, the specification is replete with references to “products” and “services.” As
Lodsys notes, the specification explains that “both the Products and the Services appropriate for
this invention will be referred to as Products.”
As noted above “the words of a claim ‘are generally given their ordinary and customary
meaning’ * * * that the term would have to a person of ordinary skill in the art in question at the
time of the invention.” Phillips, 415 F.3d at 1312-13, (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he person of ordinary skill in the art is deemed to
read the claim term not only in the context of the particular claim in which [it] appears, but in the
context of the entire patent, including the specification.” Id. at 1313.

7

The abstract was added in a preliminary amendment. USP7222078_SFH.pdf (file history for ‘078 patent on CD
provided after the conclusion of the Markman hearing) Bookmark 2004-5-21 Abstract, Preliminary Amendment.

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The defendants have not pointed to anything in the specification that suggests that
“commodity” was intended to have a narrower construction than its ordinary and customary
meaning, or that the term refers to something other than the various products and services
discussed in the specification.
The defendants’ reference to various dictionary sources in an effort to limit the ordinary
and customary meaning of “commodity” is unavailing. The term “commodity” has both broad
and narrow interpretations.

The defendants have not made any persuasive showing that

“commodity” was intended to be limited to its most restrictive meaning. For example, the
defendants point to The Random House Dictionary of the English Language 2074 (2d ed. 1987),
defining “commodity” as “an article of trade or commerce, esp. a product as distinguished from a
service,” is not persuasive. The same dictionary also defines “commodity” as “something of use,
advantage, or value.” Similarly, Webster’s Ninth New Collegiate Dictionary (1985), which
defendants also rely on, [Dkt. No. 578-9] defines “commodity” as “1: an economic good: as a: a
product of agriculture or mining b: an article of commerce esp. when delivered for shipment
(commodities futures) 2 a: something useful or valuable b: CONVENIENCE, ADVANTAGE, 3
obs. QUANTITY LOT.”
The other dictionary definitions that defendants have proposed, Defendants’ Response
[Dkt. No. 578] at 6 n. 11, have been considered, but are likewise not persuasive. Certainly
“commodity” may consist of goods bartered through commodity exchanges, such as corn, wheat,
etc., and certainly a “commodity” may consist of physical goods, but the definitions that
defendants rely on do not establish that “commodity” is necessarily limited to a “physical good,”
or that such limited scope was intended by the patentee. Rather, the ordinary and customary
meaning of “commodity” is broader than that, including generally something useful or valuable.
The defendants also rely on other claim language. Defendants are correct that other
claim language may assist in determining the meaning of a term in a particular claim. See
Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted claim can be
highly instructive.”). For example, in Phillips, one of the terms at issue was “steel baffles.” The
court noted that “steel” “strongly implies that the term ‘baffles’ does not inherently mean objects
made of steel.” Id.

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Claim 1 of the ‘078 patent calls for:
1. A system comprising:
units of a commodity that can be used by respective users in different locations,
a user interface, which is part of each of the units of the commodity, configured to
provide a medium for two-way local interaction between one of the users and the
corresponding unit of the commodity, and further configured to elicit, from a user,
information about the user’s perception of the commodity,
a memory within each of the units of the commodity capable of storing results of
the two-way local interaction, the results including elicited information about user
perception of the commodity,
a communication element associated with each of the units of the commodity
capable of carrying results of the two-way local interaction from each of the units
of the commodity to a central location, and a component capable of managing the
interactions of the users in different locations and collecting the results of the
interactions at the central location.
As discussed below, the underlying dispute between the parties vis-à-vis “user interface”
is whether “user interface” is necessarily limited to hardware. The Court concludes below that
“user interface” is not necessarily so limited.

Similarly, the Court concludes below that

“memory within” is not necessarily limited to a memory “physically located within.” Thus,
although those terms may provide context, and may be instructive, those terms do not necessarily
limit “commodity” to a “physical good.”
Also, it seems from the briefing that a primary underlying issue is whether computer
software constitutes a “product” or whether computer software constitutes a “service.” For
example, Kaspersky argues that software is not a physical product, and that “software by itself
does not include ‘memory,’ a ‘user interface’ that provides a ‘medium’ for ‘two-way local
interaction,’ or a ‘communications element’ that can carry information from users to a ‘central
location,’ along with information from ‘passive probes’ as recited in dependent claim 5,” and
that “[t]he recitation of physical devices such as memory, transmitter, and processor
demonstrates that these elements cannot be met by software alone.” Kaspersky’s Corrected
Response [Dkt. No. 590] at 6.
Certainly, claim 1 calls for “a user interface” which “is part of each of the units of the
commodity.” And similarly calls for “a memory” “within each of the units of the commodity.”
Software, as discussed below, may include a “user interface” that “is part of” the software, and

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may include “memory” that is “within” the software. Thus, to the extent that the parties argue
whether software constitutes a “product” or a “service,” as a “service,” software generically may
clearly meet the terms of the claim. With respect to specific software and other “services,” the
nature of that software and those services may or may not fall within the express terms of the
claim. That is an issue for the infringement phase of this case. Markman-type claim construction
does not necessarily resolve all outstanding infringement issues.
The defendants also note that dependent claims refer to physical goods, such as
“facsimile equipment,” “telephone extension equipment,” “consumer television equipment.”
However, those dependent claims narrow “commodity” in the base claim to specific types of
“commodities.” Thus, if anything, those dependent claims suggest a broader construction for
“commodity” in the base claim. See Phillips, 415 F.3d at 1314-15 (“Differences among claims
can also be a useful guide in understanding the meaning of particular claim terms. * * * For
example, the presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim.”).

In

particular, those claims do not limit the construction of “commodity” in the base claim, and,
indeed, under the doctrine of claim differentiation, suggests that “commodity” is a broader term.
Although claim differentiation is a guideline, not a rigid rule, see Laitram Corp. v. Rexnord, Inc.,
939 F.2d 1533, 1538 (Fed. Cir. 1991) (“Claim differentiation is a guide, not a rigid rule.”), in all
events, those dependent claims do not serve to narrow “commodity” in the base claim to a
“physical product.”
Accordingly, the Court declines to adopt the defendants’ proposed construction requiring
that “commodity” consist of a “physical good.”

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Secondly, the defendants urge that “c
e
commodity” must be “bought or sol
”
ld.” However, as
c
ints
n
fers to “educ
cational and non-comme
d
ercial
Lodsys correctly poi out, the specification clearly ref
‘product[
[s].’ ” The defendants, in response, urge that the education curriculum e
d
i
e
embodiment is in
t
the conte of a phys
ext
sical good (e
e.g., a comp
puter) bought or sold tha can utilize that curricu
t
at
e
ulum.
Lodsys, in reply, note that the sp
i
es
pecification also explain that:
ns

‘078 pate col. 17, lines 8-21. Lodsys’ Re
ent,
eply [Dkt. No 591] at 6- Clearly, the specific
o.
-7.
cation
refers to non-comme
ercial setting including educational institutions, nonprofit o
gs
,
organizations and
s,
more bro
oadly to “an type of or
ny
rganization or institution The def
o
n.”
fendants hav not point to
ve
ted
any porti of the specification that limits the disclose invention to a physi
ion
s
n
ed
n
ical good (e
e.g., a
computer bought or sold that can utilize that curriculum
r)
n
t
m.
The dictionar definition that the defendants re on, Defe
T
ry
ns
d
ely
endants’ Res
sponse [Dkt No.
t.
578] at 7, are not persuasive because whil those def
7
p
le
finitions ind
dicate that a “commodit is
ty”
somethin that can be bought and sold, those defin
ng
nitions do n restrict “commodity to
not
y”
somethin that can be bought and sold.
ng
d
Accordingly, the Court declines to adopt the defendants’ pr
A
d
a
roposed con
nstruction tha the
at
“commod
dity” must be “bought or sold.”
b
r

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With respect to “stand alone,” the portion of the prosecution history that the defendants
refer to is a portion of the inter partes reexamination of the ‘078 patent. In an Action Closing
Prosecution (ACP) dated September 25, 2012, the examiner noted that:
In the Order Granting Inter Partes Reexamination, mailed 28 September 2011, the
examiner addresses issues of claim construction. Specifically, at pages 10-12 of
the Order, the examiner interpreted the term “commodity” as meaning “a product
or service”, and interpreted the term “unit of a commodity” as meaning “a single
instance of a product or a single use of a service.”
ACP [Dkt. No. 578-3] at 6-7. The patent owner argued, inter alia, that “the terms ‘commodity’
and ‘unit of a commodity’ have been explicitly tied to the terms ‘product’ and ‘service’ as those
terms are used in the ‘078 patent * * *,” “the use of the terms as applied to Kravette’s [a prior art
reference] combination of copiers plus a monitoring system is ‘wholly inconsistent with the use
of the terms in the ‘078 patent’ * * *, and that persons of ordinary skill in the art would not have
recognized the plurality of copiers plus the monitoring system of Kravette as constituting ‘a
single instance of a product * * *,” “the examiner’s interpretation of the terms ‘commodity’ and
‘unit of a commodity’ constitute an impermissible broadening of the Patent Owner’s claims
* * *.” ACP [Dkt. No. 578-3] at 7-8.
The examiner responded that “[d]uring reexamination proceedings, terms in the claims
are given their broadest reasonable interpretation consistent with the specification.” Id. at 9. The
examiner further explained:
Certainly the interpretation of claim terms must be consistent with the
specification. However, as noted in the Order, the term ‘commodity’ does not
appear in the specification of the ‘078 patent. Because [the] term was introduced in
a pre-amendment during prosecution of parent application 09/370,663, [to] replace
the term ‘product,’ and because the term ‘product’ does appear throughout the
specification, it logically follows that one interpretation of the claimed
‘commodity’ is ‘product.’
Based upon terminology used in some of the claims (particularly claims 6, 8, 11, 50
and 54), and characterizations of the invention in the specification, the term
‘commodity’ was interpreted as a product or service, and a ‘unit of a commodity’
was interpreted as a single instance of a product, or a single use of a service.
Although the terms “product” and “service” are used extensively throughout the
specification of the ‘078 patent, there is no explicit definition presented, and there
does not appear to be any disclosure that would serve to limit the proper
interpretation of these terms beyond their ordinary and customary meaning. That
being the case, the terms will be interpreted consistent with their ordinary and
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customary meaning, as perceived by an ordinary artisan at the time of the
invention.
ACP [Dkt. No. 578-3] at 9-10. (emphasis omitted). Later in the ACP, the examiner noted that
the “term ‘product’ is (and was at the time of the ‘078 patent) broad. The relevant definition
offered by Merriam-Webster’s dictionary website (www.m-w.com) for the term ‘product’ is ‘2. a
(1): something produced: especially: COMMODITY 1 (2): something (as a service) that is
marketed or sold as a commodity.’ ” ACP [Dkt. No. 578-3] at 15.
The examiner also disagreed with the patent owner’s arguments vis-à-vis the rejection
over Kravette:
The Patent Owner takes issue with the interpretation of the claim term “unit of a
commodity” [interpreted by the examiner as including “a single instance of a
product’] as being broad enough that it would be anticipated by Kravette’s
combination of copiers plus a monitoring system. The implication is that it is the
Patent Owner’s position that a “single instance of a product” cannot include
comprised of multiple components, but that in such as case, each component would
itself embody a product.
ACP [Dkt. No. 578-3] at 10. (emphasis omitted). The examiner then went on to explain why that
argument was not accepted. For example, the examiner noted that “there are certainly ‘products’
at the time of the ‘078 patent that was [sic.] comprised of several components and yet would
have been commonly understood by an ordinary artisan as being ‘a single instance of a
product.’ ” ACP [Dkt. No. 578-3] at 13. The examiner used computers and automobiles as
examples.
In response, the patent owner argued that the examiner was wrong in adopting a
“broadest reasonable” construction, and argued that “claim interpretation for an expired patent
undergoing reexamination must be conducted by the Office in a manner analogous to the
standard used by courts in an infringement context.” Response to Inter Partes Reexamination
Action Closing Prosecution dated September 25, 2012 [Dkt. No. 578-10] at 18. The patent
owner argued that “the Patent Owner respectfully submits that applying the correct standard
would at least require that the meaning of the terms ‘product’ and ‘service’ be interpreted
consistent with the use of these terms in the ‘078 patent such that (i) ‘unit of a commodity’
would be interpreted to mean ‘a single instance of a product or a single instance of a service,’

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and (ii) ‘units of a commodity’ would be interpreted to mean ‘multiple instances of a product or
multiple instances of a service.’ ” Id. at 19.
The patent owner also argued that “with regard to the foregoing definition of ‘product’
and particularly regarding the situation where two or more products are combined, the Patent
Owner respectfully submits that such a combination of products creates a new product when a
person of ordinary skill in the relevant art at the time of the invention would readily recognize
the combination of products as a new product that is identifiable and distinguishable from the
component products from which it is constructed; otherwise the combination does not result in
the creation of a new ‘product’ but is merely a combination of existing products.” Id. at 20.
With regard to the rejection based on Kravette, the patent owner argued:
For example, the Patent Owner respectfully submits that it is erroneous to apply the
terms commodity (again, defined by the Examiner as “a product or service”) and a
unit of a commodity (again, defined by the Examiner as “a single instance of a
product or a single use of a service,” emphasis added) to the combination of copiers
plus a monitoring system disclosed in Kravette (see Reexam Order, pp. 23-25)
because this combination of copiers plus a monitoring system disclosed in Kravette
exceeds the ordinary and customary meaning of the terms “product” and “service”
as these terms would be readily recognized and reasonably understood by persons
of ordinary skill in the relevant art at the time of the invention.
Id. at 21.
The patent owner denied having argued that a “single instance of a product” cannot
include a “product” having multiple components – as the examiner had asserted in the ACP
above. Rather, the patent owner urged:
On the contrary, the Patent Owner readily acknowledged that a “product” or a
“service” may (or may not) be comprised of multiple components-and even that
each of these multiple components may be a “product” or a “service” in its own
right. However, it is the Patent Owner’s position that (a) whether a specific
combination of components in fact constitutes “a single instance of a product or a
service” entirely depends on how the combination of such components would be
reasonably perceived by persons of ordinary skill in the relevant art at the time of
the invention in view of the ordinary and customary meaning of the terms
“product” and “service”; and (b) the mere integration of two or more products and
services does not necessarily render a new product or service.
Response to Inter Partes Reexamination Action Closing Prosecution Dated September 25, 2012
[Dkt. No. 578-10] at 22-23.
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In that context, the patent owner argued that a PBX system disclosed in the specification,
which the examiner had relied on in asserting that a “product” may consist of several
components, was not “automatically” a “product”:
Therefore, while the section of the ‘078 patent quoted above does disclose a “PBX
telephone system,” it is not automatic that this PBX telephone system (alone or in
combination with the “the individual phone stations”) must be a “product” as
seemingly suggested by the Examiner; instead, the “PBX telephone system” as a
whole (the PBX plus phone stations) can only be characterized as a single
“product” if and only if it would be perceived by persons of ordinary skill in the
relevant art at the time of the invention as a single “product” according to the
ordinary and customary meaning of the term “product” (and corresponding to the
term unit of a commodity in the ‘078 patent claims) which, the Patent Owner
submits, is in no way determinative from the disclosure quoted above “alone.”
Response to Inter Partes Reexamination Action Closing Prosecution Dated September 25, 2012
[Dkt. No. 578-10] at 22-23.
The patent owner then argued:
In addition, the Patent Owner respectfully submits that a PBX system is readily
distinguishable from Kravette because: (i) the stand-alone copiers of Kravette are
entirely operable without being connected to the monitoring system, whereas the
component telephones must be connected to the PBX to function at all; and (ii) a
copier-plus-monitoring system is not sufficiently distinguishable from a standalone copier for a skilled artisan to reasonably conclude that the copier-plusmonitoring-system is a new “product” distinct and identifiable from the stand-alone
copier (but instead would continue to view both the copier plus monitoring system
as separate products), whereas in contrast a PBX and its associated user equipment
require combination with each other to be operable and thus would each be
component products that in combination together form a new product from the
perspective of skilled artisans.
Id. at 24-25. The defendants rely on the preceding argument in urging that a “commodity” must
be “stand-alone.” Defendants’ Response [Dkt. No. 578] at 8.
The Federal Circuit has commented that “because the prosecution history represents an
ongoing negotiation between the PTO and the applicant, rather than the final product of that
negotiation, it often lacks the clarity of the specification and thus is less useful for claim
construction purposes.” Phillips, 415 F.3d at 1317. Accordingly, the Federal Circuit has advised
that “we have recognized that a ‘clear and unmistakable’ disavowal during prosecution
overcomes the ‘ “heavy presumption” that claim terms carry their full ordinary and customary
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meaning.’ ” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013),
quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323, 1326 (Fed. Cir. 2003).
It is clear from the foregoing that the patent owner was distinguishing the copiers
disclosed in Kravette from a PBX system in the context of the argument that a “product” “can
only be characterized as a single ‘product’ if and only if it would be perceived by persons of
ordinary skill in the relevant art at the time of the invention as a single ‘product’ according to the
ordinary and customary meaning of the term ‘product’ * * *.” The patent owner did not argue
that a “commodity” or a “unit of a commodity” must be “stand-alone.” In all events, there was
no clear and unambiguous disavowal.
Lastly, Kaspersky, in the JCCS [Dkt. No. 505] did not propose a construction for
“commodity.” JCCS [Dkt. No. 505] at 6. In its brief, Kaspersky urged that software alone
cannot meet the asserted claims. Kaspersky’s Corrected Response [Dkt. No. 590] at 5-7. In the
Joint Claim Construction Chart per local rule 4-5(d), Kaspersky has urged that “commodity”
should be construed as “physical goods used alone or in connection with a service.” JCCC [Dkt.
No. 615] at 2. In a footnote, Lodsys “objects to, and reserves the right to move to strike, the new
positions taken and new constructions offered, for the first time, by Kaspersky Lab, Inc. in this
Joint Claim Construction Chart as contrary to Kaspersky’s obligations and disclosures under P.
R. 4-1, 4-2, and/or 4-3.” JCCC [Dkt. No. 615] at 2, n. *.
Without deciding Lodsys’ objection, the Court simply notes that the defendants’
proposed construction requiring that a “commodity” be a “physical good” has been rejected, and
that applies as well to Kaspersky’s proposed construction.

The remainder of Kaspersky’s

proposed construction, “used alone or in connection with a service” appears to simply foster
Kaspersky’s non-infringement argument that software alone cannot meet the asserted claims.
Whether Kaspersky’s accused product(s) meet the asserted claims as finally construed will be
decided in conjunction with deciding infringement. Kaspersky has not shown that the term
“commodity” per se is limited to a “good” or “product” that is “used alone or in connection with
a service.”
The Court concludes that “commodity” should be construed as “products or services.”

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c) Court’s Construction of “units of a commodity”
Lodsys urges that “units of a commodity” should be construed as “instances of a product
or a service.” The defendants urge that the phrase should be construed as “standalone physical
goods that are bought or sold.” Kaspersky urges that the phrase should be construed as “specific
physical goods used alone or in connection with a service.” JCCC [Dkt. No. 615] at 2.
The defendants’ and Kaspersky’s proposed constructions are declined for the same
reasons as discussed above in conjunction with “commodity.”
Additionally, the defendants urge that “units of a commodity” means multiple units of a
single commodity. The defendants argue that “[a] person skilled in the art would recognize that
use of ‘unit of a commodity’ in lieu of the plural ‘commodities’ distinguishes multiple quantities
of the same commodity from multiple different commodities. Defendants give meaning to this
aspect of the claims in the proposed constructions.” Defendants’ Response [Dkt. No. 578] at 9.
Defendants rely on Webster’s New Ninth Collegiate Dictionary (1985), and the definition of
“unit” as “a single quantity regarded as a whole in calculation.”
It is not readily apparent whether there is any actual dispute between the parties. Lodsys
does not seem to disagree that “units” is the plural of “unit.”

Lodsys simply substitutes

“instances” for “units” in its proposed construction. Lodsys does not, however, specifically
address whether “unit of a commodity” in lieu of the plural form distinguishes multiple
quantities of the same commodity from multiple different commodities, e.g., “units of a
commodity.” On the other hand, the defendants do not point to any portion of the specification
that makes a distinction between multiple quantities of the same commodity and multiple
different commodities. Nor do the defendants point to any language in the claims (other than the
plural and singular forms of words) that distinguishes multiple quantities of the same commodity
from multiple different commodities.
Additionally, the parties have not provided the Court with any meaningful basis on which
to evaluate those contentions – or even whether those contentions are germane to any issue in
this case. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326-27
(Fed. Cir. 2006)(“[I]in reviewing claim construction in the context of infringement, the legal
function of giving meaning to claim terms always takes place in the context of a specific accused
infringing device or process. While a trial court should certainly not prejudge the ultimate
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infringement analysis by construing claims with an aim to include or exclude an accused product
or process, knowledge of that product or process provides meaningful context for the first step of
the infringement analysis, claim construction.”), Lava Trading, Inc. v. Sonic Trading Mgmt.,
LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006)(“[T]his record on appeal does not supply any
meaningful comparison of the accused products to the asserted claims. Without knowledge of the
accused products, this court cannot assess the accuracy of the infringement judgment under
review and lacks a proper context for an accurate claim construction.”).
Accordingly, the Court simply notes that the term “units” is the plural form of “unit,” but
does not draw any further conclusions. Indeed, the parties have not provided the Court with any
meaningful briefing on whether “unit of a commodity” in lieu of the plural form distinguishes
multiple quantities of the same commodity from multiple different commodities, e.g., “units of a
commodity.” Simply because a claim uses a term in a singular – or plural – form does not
necessarily mean that the claim should be construed literally based on those singular or plural
forms.
Normal rules of grammatical construction sometimes apply to claim construction. See
Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 886 (Fed. Cir. 2004)(“Applying this
grammatical principle here, the phrase ‘at least one of’ modifies each member of the list, i.e.,
each category in the list.”).
However, there are instances in which normal grammatical rules are trumped by
particular usages in patent parlance – especially in instances whether a singular form is allegedly
limited to “one and only one,” or whether a singular form may include “more than one.” See e.g.
SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348, 1360 (Fed. Cir. 2012)(“[T]his court has
repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning
of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’ * * *,”
quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)), KCJ
Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)(“This court has repeatedly
emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
more’ in open-ended claims containing the transitional phrase ‘comprising.’ * * * Unless the
claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation
only in rare circumstances when the patentee evinces a clear intent to so limit the article. * * *
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Under this conventional rule, the claim limitation ‘a,’ without more, requires at least one. * * *
Moreover, standing alone, a disclosure of a preferred or exemplary embodiment encompassing a
singular element does not disclaim a plural embodiment.”).
Whether a singular form of a term in a claim precludes the plural, or vice versa,
frequently depends on how a term is used in context, as well as what the specification discloses.
See e.g., Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011)(relying on claim language), August
Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011)(analyzing claims to determine
whether there was any difference between singular and plural forms), Hyperphrase Techs., LLC
8

v. Google, Inc., 260 Fed. Appx. 274, 279 (Fed. Cir. 2007)(non-precedential) (“The district
court’s error, however, was in going beyond this explicit definition to hold that a data reference
may only refer to one and only one possible record. * * * Neither the phrase ‘one and only one’
nor any equivalent language appears in the claim. Although the claim recites ‘a’ second record
instead of ‘one or more’ records, we have held that the use of the singular form ‘a’ in
conjunction with ‘comprising’ and without narrowing language, such as ‘one and only one,’
typically encompasses both singular and plural possibilities.”), Free Motion Fitness, Inc. v.
Cybex Int’l, Inc., 423 F.3d 1343, 1350 (Fed. Cir. 2005)(district court’s inference that “if the
patent intended more than one cable, it would have expressly indicated that by using a plural
term” found to be error – “This convention [that “a” or “an” means “one or more” in open-ended

8

Federal Circuit Rule 32.1, provides in part:
(b) Nonprecedential Opinion or Order. An opinion or order which is designated as
nonprecedential is one determined by the panel issuing it as not adding significantly to
the body of law.
(c) Parties’ Citation of Nonprecedential Dispositions. Parties are not prohibited or
restricted from citing nonprecedential dispositions issued after January 1, 2007. This rule
does not preclude assertion of claim preclusion, issue preclusion, judicial estoppel, law of
the case, and the like based on a nonprecedential disposition issued before that date.
(d) Court’s Consideration of Nonprecedential Dispositions. The court may refer to a
nonprecedential disposition in an opinion or order and may look to a nonprecedential
disposition for guidance or persuasive reasoning, but will not give one of its own
nonprecedential dispositions the effect of binding precedent. The court will not consider
nonprecedential dispositions of another court as binding precedent of that court unless the
rules of that court so provide.

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claims] is overcome only when ‘the claim is specific as to the number of elements’ or ‘when the
patentee evinces a clear intent to * * * limit the article.’ ”), Embrex, Inc. v. Serv. Eng’g Corp.,
216 F.3d 1343, 1348 (Fed. Cir. 2000)(“While use of the singular form of a word does not
preclude a meaning which includes the plural, * * * these descriptions of the singular injections
into individual eggs, without more, do not limit the claims to cover only inoculations of an entire
flock of birds. Logic precludes reading a rule that permits singular usage to encompass the plural
to require instead the plural meaning.”), Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d
1098, 1105-06 (Fed. Cir. 1996) (reviewing the “claims, specification and file history” to
determine that “a vacuum cup” means one and only one vacuum cup).
The parties have not addressed any of the foregoing. The Court declines to do so in the
first instance.
d) Court’s Construction of “product”
Lodsys urges that no construction is necessary, but if necessary “product” should be
construed as “item or service, including hardware or software, provided to a user.”

The

defendants proposed that “product” should be construed as “a standalone physical good that is
bought or sold.” Kaspersky urges in the ‘565 patent, in claims 1, 5, 8, 10, 13, “a product is not
the same as the unit,” in claims 14, 17, 19, 20, 22, 25, 26, “a product is distinct from the device
that is performing the method steps,” and in claims 27 and 28, “a product is distinct from the
executable code and from the computing device.” JCCC [Dkt. No. 615] at 2-3.
The Court declines to adopt the defendants’ proposed construction of “product” for the
same reasons discussed above in conjunction with “commodities.”
As for Kaspersky’s proposed constructions, Kaspersky did not propose constructions for
“product” in the Joint Claim Construction Statement. JCCS [Dkt. No. 505] at 12. Kaspersky
first proposed those constructions in the Joint Claim Construction Chart [JCCC] under local Rule
4-5(d). JCCC [Dkt. No. 615] at 2-3. As noted above, Lodsys has objected to Kaspersky’s
constructions offered for the first time in the JCCC.
The JCCC was filed on April 19, 2013, after the parties had filed their respective claim
construction briefs. Kaspersky in its claim construction brief urges that claims 1, 15, and 27 of
the ‘565 patent use “product” to refer to hardware, and urges that “[t]he recitation of physical

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devices such as memory, transmitter, and processor demonstrates that these elements cannot be
met by software alone.” Kaspersky’s Corrected Response [Dkt. No. 590] at 6.
Local Patent Rule 4-3(b) provides for the filing of a Joint Claim Construction and
Prehearing Statement not later than 60 days after service of the “Invalidity Contentions.” The
rule provides that the Joint Claim Construction Statement must include:
(b) Each party’s proposed construction of each disputed claim term, phrase, or
clause, together with an identification of all references from the specification or
prosecution history that support that construction, and an identification of any
extrinsic evidence known to the party on which it intends to rely either to support
its proposed construction of the claim or to oppose any other party’s proposed
construction of the claim, including, but not limited to, as permitted by law,
dictionary definitions, citations to learned treatises and prior art, and testimony of
percipient and expert witnesses.
Under Local Patent Rule 4-4, the parties then have thirty (30) days after filing of the Joint Claim
Construction and Prehearing Statement to “complete all discovery relating to claim construction,
including any depositions with respect to claim construction of any witnesses, including experts,
identified in the Joint Claim Construction and Prehearing Statement.”
Local Patent Rule 4-5 addresses claim construction briefing, and Rule 4-5(d) provides
that “[a]t least 10 days before the Claim Construction Hearing held pursuant to P.R. 4-6, the
parties shall jointly file a claim construction chart” containing columns listing the disputed claim
terms, columns listing the parties’ proposed constructions, and a fourth column left blank for the
Court’s construction.
Thus, introducing newly proposed claim constructions in the Rule 4-5)(d) JCCC, after the
conclusion of the parties’ infringement and invalidity contentions, discovery, and claim
construction briefing, and shortly before the claim construction hearing, especially without
seeking leave of Court, upsets the fundamental purpose sought by the Local Patent Rules of
expediting and ordering the necessary stages of claim construction.
If the Court were to comment at this stage on Kaspersky’s proposed constructions, the
Court would be doing so without the benefit of the parties’ briefs, and potentially to the prejudice
of not only Lodsys, but the other defendants as well.

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Moreover, the Court is not aware of how, if at all, Kaspersky’s belated proposed
constructions may impact any issue in this case. See Wilson Sporting Goods, 442 F.3d at 132627, Lava Trading, 445 F.3d at 1350.
Accordingly, the Court declines to comment on Kaspersky’s proposed constructions, and
deems those proposed constructions to have been waived.
With respect to Lodsys’ proposed construction, substituting “item” for “product” does not
solve or address any identifiable dispute between the parties. As for whether “product” includes
“services,” the specification, as discussed above, expressly equates “products” with both
“products” and “services” (“For the purposes of this description, both the Products and the
Services appropriate for this invention will be referred to as Products.”).
Lodsys adds “including hardware or software, provided to a user,” apparently in response
to arguments made by the defendants and Kaspersky, to emphasize that “product” may include
both hardware and software. However, given the foregoing discussion, there is no necessity for
adopting that “including” language. Whether specific hardware or software is found to infringe
the asserted claims – after all disputed claim terms are construed – is an issue for the
infringement phase of this action.
Accordingly, the Court concludes that “product” should be construed as “product or
service.”

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D. “user interface”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term
“user
interface”

Claims

Lodsys

‘078:
1, 2, 4,
8, 16,
17, 19,
30, 38,
60, 65,
66, 69,
74

No construction
necessary

‘565:
1, 15,
27

Defendants

If the Court determines
this term should be
construed:
“the user interfaces is
where interaction
between a user and a
unit occurs”

“the hardware and
corresponding software
in the
[product/commodity/
computer product] that
enables interaction
between the user and
the
[product/commodity/
computer product]”

Kaspersky
“where interaction
between humans and
machines occurs,
accomplished by a
hardware device with
corresponding
software”

‘908:
37
JCCC [Dkt. No. 615] at 3

2. The Core Disagreement
The core disagreement is whether “user interface” per se requires hardware, for example,
a display etc.
3. The Parties’ Arguments
Lodsys urges that “user interface” is a recognized term in the computing arts indicating
the place of interaction between a user and a system. Lodsys urges that a “user interface” may
be implemented with software, hardware or a combination of both. Lodsys points to the IBM
Dictionary of Computing at 724 (George McDaniel ed., 10th ed. 1993) explaining: “user
interface (1) Hardware, software, or both that allows a user to interact with and perform
operations on a system, program, or device * * *.” Lodsys’ Brief [Dkt. No. 555] at 27.
Lodsys argues that is the sense that “user interface” is used in the patents-in-suit, namely
the place where interaction between a user and a unit occurs. Lodsys urges that in the case of
exclusively software products, such user interface is implemented by software alone. Lodsys
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notes that the specification includes examples of user interfaces within software products, such
as the embodiment of Fig. 24, described in the specification as “an opening interaction from a
software product.” ‘078 patent, col. 33, lines 9-26. Lodsys further urges that the specification
discloses generating reports using user interfaces in software products, pointing to the ‘078
patent, col. 57, lines 46-67. Lodsys contends that the specification thus illustrates that “user
interface” is not limited to hardware, and both the defendants’ and Kaspersky’s proposed
constructions would exclude embodiments disclosed in the specification. Lodsys’ Brief [Dkt.
No. 555] at 28.
Lodsys further urges that the claim language illustrates that a user interface may be
implemented in software alone. Lodsys points to claim 1 of the ‘565 patent calling for “a
processor * * *configured to * * * cause the display of a user interface * * * if the counter
exceeds a threshold.” Lodsys urges that claims of the ‘078 patent are drawn to the user interface
presenting information such as “text lists, charts, views, arrangements, hierarchies, graphical
maps, sample extracts, abstracts, summary descriptions, or hypertext.” Lodsys’ Brief [Dkt. No.
555] at 28-29.
The defendants, on the other hand, urge that the plain language of the claims requires that
the “user interface” include hardware. The defendants argue that claim 1 of the ‘078 patent and
claim 37 of the ‘908 patent “explicitly state that the user interface provides the medium for
interaction between a user and the unit.” Defendants’ Response [Dkt. No. 578] at 29. The
defendants argue that “[w]ithout some form of hardware as part of the user interface, such as a
display and a mouse, keyboard, or other buttons, the user would be unable to interact with the
unit. Indeed, Plaintiffs fail to explain how a user would be able to interact with a user interface
that is purely software with no hardware present. In fact, no such interaction is possible.” Id.
The defendants also urge that all of the user interface components are part of the product
in the ‘565 patent, or the commodity in the ‘078 patent, or computer product in the ‘908 patent.
The defendants further point to the September 25, 2012, ACP (mentioned above) issued during
inter partes reexamination in which the examiner commented that the “user interface is part of
the unit of the commodity itself.” ACP [Dkt. No. 578-3] at 21. The defendants urge that the
specification is replete with references to hardware that is part of the “user interface.”
Defendants’ Response [Dkt. No. 578] at 30.
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The defendants further urge that “[e]ven the specification passages that Plaintiffs cite as
purportedly supporting their construction * * * make clear that some form of hardware must be
present in the disclosed user interface.” Id. at 31.
The defendants contend that Lodsys’ alternative construction, “the user interface is where
interaction between a user and a unit occurs,” should be rejected “because it is circular, and, as a
result, unhelpful to a jury. It does not indicate what the claimed user interface is.” Id.
Kaspersky points to “user interface” as one of the terms that Kaspersky contends
precludes the asserted claims from covering software only products. Kaspersky’s Corrected
Response [Dkt. No. 590] at 5.
Lodsys replies that “[a]lthough the user may use a keyboard, mouse, or pointing device
(such as the user’s finger) to manipulate the graphical information, those physical items are not
considered part of the software product’s user interface.” Lodsys’ Reply [Dkt. No. 591] at 16.
Lodsys points to the Microsoft Press Computer Dictionary 405 (2d ed. 1994), in support. That
dictionary provides: “user interface The portion of a program with which a user interacts. If the
user enters commands at the keyboard and the program responds by operating in a specific
manner, the program has a command-line interface. If commands to the program are typically
given via menu selections, the program is said to have a menu-driven interface. A program that
displays information graphically and requires a pointing device for user interactions is said to
have a graphical user interface.” Lodsys’ Reply [Dkt. No. 591] at 16-17.
Lodsys urges that such an interface is covered by the claims that the defendants referred
to, i.e., regarding claim 1 of the ‘565 patent calling for “cause[s] the display of a user interface
* * * if the counter exceeds a threshold,” Lodsys urges that “in that example it would be
improper to say that such a graphical user interface must include the screen upon which it is
displayed, just as any software graphic does not include the computer screen upon which it may
be temporarily displayed.” Lodsys’ Reply [Dkt. No. 591] at 17.
4. Discussion
The core dispute, once again, is whether the term “user interface” requires hardware. The
defendants’ and Kaspersky’s proposed constructions would both require hardware, whereas
Lodsys’ proposed construction does not.

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The foregoing technical definition that Lodsys points to, namely from the IBM
Dictionary of Computing, plainly provides that a “user interface” may be understood to be
“[h]ardware, software, or both * * *.” The MCGRAW-HILL DICTIONARY

OF

SCIENTIFIC

AND

th

TECHNICAL TERMS (5 ed. 1994) at 2110, in the field of computer science, similarly explains that
“user interface” is “1. The point at which a user or a user department or organization interacts
with a computer system. 2. The part of an interactive computer program that sends messages to
and receives instructions from a terminal user.” Indeed, it is noted that the defendants listed the
IBM Dictionary as extrinsic evidence on the Joint Claim Construction Statement, JCCS [Dkt.
No. 505] at 29, but, it is also noted, that the defendants did not point to that or any other similar
technical reference source in their brief – presumably because those sources did not provide
support for the defendants’ argument.
Thus, insofar as the record reveals, the ordinary and customary meaning of “user
interface” includes hardware, software, or both depending on context. The defendants have not
persuasively shown that “user interface” within the context of the asserted claims requires
hardware. Nor have the defendants persuasively shown that the specification (or prosecution
history) limits “user interface” to hardware.
Defendants’ argument that “[w]ithout some form of hardware as part of the user
interface, such as a display and a mouse, keyboard, or other buttons, the user would be unable to
interact with the unit,” may be correct in the sense that input/output (I/O) devices such as
displays, keyboards etc. allow a user to interact with a device or computer. Depending on the
context, “user interface” may or may not be construed broadly to include such I/O devices. But
“user interface,” as reflected in the foregoing references, is not necessarily limited to such
hardware. The term, on the current record, includes the portion of a computer program that
sends and receives instructions from a user. For example, the Microsoft Windows® operating
system includes graphical user interfaces (GUIs) that are part of the program/software, not the
hardware on which the program/software is run. Those GUIs are ultimately communicated to a
user through a computer display – but the computer display per se is not the GUI – it simply
displays the GUI.
Thus, available reference sources indicate that from the perspective of one of ordinary
skill in the art, “user interface” could refer to hardware, software, or both. And that also appears
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to be the way the term is used in the specification and claims. For example, claim 1 of the ‘078
patent calls for “a user interface, which is part of each of the units of the commodity, configured
to provide a medium for two-way local interaction between one of the users and the
corresponding unit of the commodity, and further configured to elicit, from a user, information
about the user’s perception of the commodity * * *.” Although the “user interface” is claimed in
terms of being “part of each of the units of the commodity,” the Court has declined the
defendants’ and Kaspersky’s proposed constructions that would limit “commodity” solely to a
physical product. A “user interface” may be “part of” software in the sense that the software
defines the “user interface.” The Court thus likewise declines to adopt the defendants’ proposed
construction of “user interface” that would limit the term to “the hardware and corresponding
software * * *” – a “user interface” may consist of software alone.
Kaspersky’s proposed construction, “where interaction between humans and machines
occurs, accomplished by a hardware device with corresponding software,” similarly requires
“hardware.” The Court declines to adopt that construction for the same reason.
The Court further declines to adopt Lodsys’ proposed construction, “the user interfaces is
where interaction between a user and a unit occurs,” because it does not directly address the
parties’ underlying dispute. Again, the underlying dispute between the parties is whether “user
interface” is necessarily limited to hardware. The Court concludes that “user interface” is not
necessarily so limited. That resolves the parties’ underlying dispute, and no further construction
is deemed necessary.
E. “a memory within each of the units of the commodity”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed Term

Claims

“a memory
within each of
the units of the
commodity”

‘078: 1

Lodsys

Defendants

“memory allocated to
each of the units of the
commodity”

“a memory physically
located within each of
the units of the
commodity”

JCCC [Dkt. No. 615] at 4

34

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2. The Core Disagreement
The core disagreement centers on the word “within.” The defendants and Kaspersky urge
that “within” means “physically located within.” Lodsys urges that excludes purely software
embodiments.
3. The Parties’ Arguments
Lodsys argues that “the ‘078 patent’s specification makes clear that the term [“memory
within”] includes “memory allocated to” each of the units. Lodsys’ Brief [Dkt. No. 555] at 31.
Lodsys urges that the specification of the ‘078 patent describes the invention in terms that cover
products that are purely “non-physical software.” Lodsys argues that “[c]onstraining the term
‘memory within’ to mean only ‘memory physically located within’ each of the units, would
therefore improperly exclude examples of the invention plainly illustrated and disclosed in the
specification.” Lodsys’ Brief [Dkt. No. 555] at 31.

Lodsys argues that “the specification

includes multiple examples of memory that may be allocated to the invention but need not be
‘physically located within’ the unit.” Id. at 32. Lodsys accuses the defendants of not construing
the claim language, but rather attempting to introduce new, limiting claim language. Id.
The defendants urge that “[t]he ordinary meaning of a memory ‘within’ a unit of the
commodity is that the memory is located inside the commodity.” Defendants’ Response [Dkt.
No. 578] at 33. The defendants urge that Lodsys’ proposed construction, changing “within” to
“allocated to,” would “be satisfied as long as the memory is ‘allocated’ to the commodity, even if
the memory is located in a server a thousand miles away. This construction must be rejected
because it impermissibly redefines the term’ ‘within’ away from its ordinary meaning.” Id. at 34.
The defendants also urge that their proposed construction is consistent with the
specification. The defendants contend that the invention was designed to “embed” a new type of
product feature in a range of products and services to solicit feedback from customers. The
defendants argue that “[b]ecause the feedback module containing the memory is ‘embedded’ or
inserted into the product, it follows that the memory inside the module also is physically located
in the product.” Id.
The defendants also urge that Lodsys’ proposed construction is inconsistent with the
prosecution history. The defendants note that during prosecution, claim 1 of the ‘078 patent

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originally recited “a memory that is associated with each of the units of the commodity.” During
prosecution, applicant amended the claim to recite “a memory that is associated with included
within each of the units of the commodity.” The defendants note that the claim was later
amended to recite “a memory that is included within each of the units of the commodity.” “In
short,” the defendants say, “the claim was amended from reciting memory ‘associated with’ a
unit of the commodity to requiring that the memory be ‘within’ the unit.” Id. at 35. The
defendants argue that Lodsys’ proposed construction ignores that prosecution history.
The defendants also point to Webster’s Ninth New Collegiate Dictionary 1355 (1991)
explaining that “within” is “used as a function word to indicate enclosure or containment.”
In reply, Lodsys argues that “[b]y inserting the words ‘physically located,’ into the claim,
Defendants attempt to limit the claims to units of a commodity with a physical ability to have
memory inside. But this construction ignores the specification’s explicit discussion of numerous
non-physical units of the commodity * * *. Defendants’ construction would improperly excludes
[sic.] these embodiments.” Lodsys’ Reply [Dkt. No. 591] at 19.
With respect to prosecution history, Lodsys argues that prosecution history estoppel “is
not an issue for claim construction.” Id. at 20, citing Spectrum Int’l, Inc. v. Sterilite Corp., 164
9

F.3d 1372, 1378-79 (Fed. Cir. 1998).

Lodsys further argues that there was no “clear and

unambiguous disclaimer” by the applicant. Lodsys’ Reply [Dkt. No. 591] at 20. Lodsys also
argues that deleting “that is included” from the phrase “a memory that is included within each of
the units of the commodity” had the effect of broadening the claim, i.e., according to Lodsys,
“making clear that the claim is not limited to a memory ‘physically included’ within the units of
the commodity.” Id. at 20.
Lodsys finally argues, relying on several dictionary definitions, that “[a] person of
ordinary skill in the art would have considered ‘memory’ to include virtual memory,” and that
the defendants’ proposed construction would “artificially limit[ ] ‘memory’ to physical memory

9

Lodsys makes a similar argument in connection with the disputed terms “counter” / “increment a counter” / “if the
counter exceeds a threshold” which are addressed below. The Court addresses Spectrum and Lodsys’ contention in
conjunction with those terms.

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by requiring that the memory is ‘physically located within.’ ” Id. at 21. Lodsys contends that
“[i]n the context of the patent, one of ordinary skill in the art would recognize that virtual
memory is ‘within’ a unit of a commodity, such as a software program, because it is ‘available
to’ the program and once the program is running, the memory is ‘allocated to’ it.” Id.
4. Discussion
It is not the province of the Court, during claim construction, to re-write the claims. See
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims;
instead, we give effect to the terms chosen by the patentee.”); SRAM Corp. v. AD-II Eng’g, Inc.,
465 F.3d 1351, 1359 (Fed. Cir. 2006)(“While SRAM strongly urges the court to interpret the
claim to encompass the innovative precision indexing shifting feature it contends it has invented,
we are powerless to rewrite the claims and must construe the language of the claim at issue based
on the words used. * * * In this case, the words are clear and the claim covers no more than the
recited method of taking up lost motion and effecting a shift.”), Hoganas AB v. Dresser Indus.,
Inc., 9 F.3d 948, 951 (Fed. Cir. 1993)(“If Hoganas, who was responsible for drafting and
prosecuting the patent, intended something different, it could have prevented this result through
clearer drafting. * * * It would not be appropriate for us now to interpret the claim differently
just to cure a drafting error made by Hoganas. That would unduly interfere with the function of
claims in putting competitors on notice of the scope of the claimed invention.”), Tex.
Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[C]ourts
can neither broaden nor narrow claims to give the patentee something different than what he has
set forth.”) (internal quotes omitted).
The asserted claims expressly call for “a memory within each of the units of the
commodity,” not “memory allocated to each of the units of the commodity” as Lodsys proposes.
The term “within” is a common English word. Merriam-Webster’s Collegiate Dictionary (10th
ed. 1999) at 1359, defines “within” as “in or into the interior : INSIDE.” Other available
definitions are similar: “adverb 1. in or into the interior or inner part; inside. 2. in or into a house,
building, etc.; indoors: The fire was burning on the hearth within. 3. on, or as regards, the inside;
internally. 4. inside an enclosed place, area, room, etc.: He was startled by a cry from within. 5.
in the mind, heart, or soul; inwardly. preposition 6. in or into the interior of or the parts or space
enclosed by: within city walls. 7. inside of; in. 8. in the compass or limits of; not beyond: within
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view; to live within one’s income. 9. at or to some point not beyond as in length or distance not
o
o
t
d,
h
e;
han:
t
degree not e
exceeding: w
within
farther th within a radius of a mile. 10. at or to some amount or d
two degr
rees of freezi
ing.” http://d
dictionary.reference.com
m/browse/wit
thin.
Again, the Fe
A
ederal Circu in Phillip advised th “the wor of a clai ‘are gene
uit
ps
hat
rds
im
erally
given the ordinary and custom
eir
y
mary meanin * * * th the term would hav to a perso of
ng’
hat
ve
on
ordinary skill in the art in questi at the tim of the in
ion
me
nvention.” P
Phillips, 415 F.3d at 1312-13.
nary and cus
stomary mea
aning of “wi
ithin” is, pu
ursuant to the sources cit by the parties
e
ted
The ordin
and foreg
going source “inside.” Lodsys has pointed to n
es,
nothing indic
cating that th customary and
he
y
ordinary meaning of “within” is “allocated to per Lodsy proposed constructio
“
o”
ys’
d
on.
cution histor does not support L
ry
t
Lodsys’ cont
tention.
Furthermore, the prosec

D
During

prosecuti of the ‘0 patent, in an amend
ion
078
dment dated September 29, 2005, r
d
r
responding to an
Office Action dated March 29, 2005, the app
M
plicant amen
nded applicat
tion claim 48 as follows:
8

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[Dkt. No 578-25] at 3. The rem
o.
t
marks made in that ame
e
endment do not specific
cally address that
s
amendme
ent. Howev it is clea that the change from “associated with” to “
ver,
ar
c
m
d
“included wi
ithin”
was a nar
rrowing ame
endment.
In a subsequ
n
uent amendm
ment dated February 24 2006, the applicant further ame
4,
e
ended
applicatio claim 48 as follows:
on

[Dkt. No 578-26] at ECF 7, do p. 2. Lo
o.
t
oc.
odsys argues that deletin “that is in
s
ng
ncluded” ha the
ad
effect of broadening the claim. It plainly did not. The September 2 2005, am
29,
mendment ca
alling
for “a memory that is associate with incl
m
ed
luded within each of th units of the commo
n
he
odity”
clearly li
imited the cl
laim to the location of th memory. The Febru
l
he
uary 24, 2006, amendme “a
ent
memory that is inclu
uded within each of the units of the commodity deleted w
e
y”
words, but di not
id
substanti
ively change the limitat
e
tion - the cl
laim remain limited to that loca
ned
ation. More
eover,
comparin the origin claim lan
ng
nal
nguage “a me
emory that i associated with each o the units o the
is
d
of
of
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commodity” with the claim language after the February 24, 2006, amendment “a memory within
each of the units of the commodity,” it is readily apparent that the applicant narrowed the claim
from “a memory that is associated with,” namely having no location limitation, to “a memory
within” – namely a location limitation.
Lodsys argues that there was no clear disavowal of claim scope.

The applicant’s

“remarks” in conjunction with the February 24, 2006 amendment said simply that “[c]laims 48
* * * are sought to be amended to more clearly point out the subject matter recited therein.”
[Dkt. No. 578-26] at ECF 22, doc. p. 17. The defendants/Kaspersky do not point to any further
arguments the applicant made in conjunction with that amendment.
Prosecution history disclaimer may arise through claim amendments, an applicant’s
arguments, or a combination of the two. See e.g., Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275, 1285 (Fed. Cir. 2010)(“The doctrine of prosecution disclaimer attaches where an
applicant, whether by amendment or by argument, ‘unequivocally disavowed a certain meaning
to obtain his patent.’ Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003).
For example, an amendment that clearly narrows the scope of a claim, such as by the addition of
a new claim limitation, constitutes a disclaimer of any claim interpretation that would effectively
eliminate the limitation or that would otherwise recapture the claim’s original scope.”), Arlington
Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1328 (Fed. Cir. 2003)(“In the course of
prosecuting a patent application, a patentee may redefine a claim term. * * * An amendment or
argument made in the course of prosecution may also serve as a disclaimer of a particular
interpretation of a claim term.”).
As noted above, the Federal Circuit has advised that prosecution disclaimer must be clear
and unambiguous.
When prosecution history disclaimer is based on an applicant’s arguments, it is clear that
those arguments must be evaluated vis-à-vis the actual claim language, the prior art (if those
arguments are made in the context of asserting that claims, as amended, define over the prior
art), and the actual arguments the applicant made. Namely, the applicant’s arguments must be
evaluated within the actual environment and context in which they were made to determine
whether there was any true disavowal of claim scope.

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But both (1) claim amendments and/or (2) argument may suffice to create prosecution
history disclaimer.

That is, claim amendments may alone result in prosecution history

disclaimer.
Prosecution history disclaimer looks at how one of ordinary skill in the art would have
viewed claim amendments during prosecution – namely, whether those claim amendments
served to affect the scope of a finally issued claim – broader or narrower – than the words of the
claim may suggest if viewed in isolation from the specification and prosecution history.
Here, the foregoing amendments to application claim 48, which became patent claim 1 of
the ‘078 patent, clearly limited the original claim language “a memory that is associated with
each of the units of the commodity” to “a memory that is associated with included within each of
the units of the commodity” and ultimately to “a memory that is associated with included within
each of the units of the commodity.”
Although the original claim called for “associated with” and Lodsys now advocates
changing “within” to “allocated to,” the applicant, during prosecution, plainly chose to amend
the claims to narrow the scope from “associated with” to “within.” That is clearly prosecution
history disclaimer. If the applicant had intended “allocated to,” as Lodsys now argues, rather
than “within,” then the applicant should have made the appropriate amendment during
prosecution.
On the other hand, the defendants and Kaspersky urge that “within” means “a memory
physically located within each of the units of the commodity.” As Lodsys correctly notes, the
claim calls for “within,” but not “physically located within.”
The Court agrees with the defendants’ argument that Lodsys’ proposed construction,
changing “within” to “allocated to,” would improperly broaden the claim because the claim,
under that construction, would “be satisfied as long as the memory is ‘allocated’ to the
commodity, even if the memory is located in a server a thousand miles away.” Defendants’
Response [Dkt. No. 578] at 34. The defendants urge that “construction must be rejected because
it impermissibly redefines the term ‘within’ away from its ordinary meaning.” Id. The Court
agrees.

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Specifically, the Court adopts the common meaning of “within” as “inside.” However,
the Court declines to adopt the defendants’ proposed construction that a “memory” must be
“physically located” within the units of the commodity. That is not what the claims provide.
Kaspersky originally urged that “memory” should be construed as “physical device used
to store programs or data on a temporary or permanent basis for use in a computer or other
digital “electronic device.” JCCS [Dkt. No. 505] at 34-35. In the JCCC [Dkt. No. 615], however,
Kaspersky has indicated “Same as Defendants.”
The Court concludes that the meaning of “within,” in the limitation of the ‘078 patent
calling for “a memory within each of the units of the commodity,” is that the memory is “inside”
each of the units of the commodity. The Court reaches the same conclusion vis-à-vis claims 1
and 6 of the ‘565 patent. The Court declines to limit the claim language to “physically located
within” because neither the claim language, nor the specification, nor the prosecution history
necessitate doing so.
As the Federal Circuit advised in Wilson Sporting Goods and Lava Trading, it is many
times difficult to resolve issues of claim construction without having a context for doing so. On
the present record, the foregoing appears to resolve the parties’ current dispute.

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F. “user’s perception of the commodity” / “information regarding a use of the product”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Terms
“user’s
perception of
the
commodity”

Claims
‘078: 1

Defendants

Lodsys
No construction
necessary
If the Court determines
this term should be
construed:
“user[’s] opinion about
the commodity,
including attitude,
needs, desires, uses,
understanding, and
complaints with respect
to the commodity”

“information
regarding a
use of the
product”

‘565:
1, 15,
27

No construction
necessary

Kaspersky

“user[’s] opinion about
the commodity formed
from prior use of the
commodity”

Proposal 3: “the
user[’s] opinion about
the commodity formed
from use of the
commodity, which does
not include opinions on
any content delivered
by the commodity”

Defendants are
alternatively agreeable
to use of the term
“actual” in place of
“prior” in the claim
construction.

“information regarding
prior use of the
product”

Opinion about a
commodity is not
elicited simply by
offering the commodity
for sale.
Information regarding
how a product is used.

JCCC [Dkt. No. 615] at 4

2. The Core Disagreement
The core disagreement is the defendants’ and Kaspersky’s contention that a user’s
“perception” must be based on prior or actual use of a product.
3. The Parties’ Arguments
Lodsys urges that the disputed phrases would be easily understood by a jury and need not
be construed. Lodsys’ Brief [Dkt. No. 555] at 3, 7. With respect to “user’s perception of the
commodity,” Lodsys urges that if a construction is necessary, that construction should be an
“opinion * * * including attitude, needs, desires, uses, understanding, and complaints,” because
those examples represents the types of perceptions included in the claims and the specification.
Id. at 4. With regard to the defendants’ proposed construction, Lodsys contends that “[w]hile it
is certainly possible that a perception may be formed from use of the commodity, there is no

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such requirement in the claims or the specification,” and “user perception may include needs,
comparisons to competing products, or other perceptions that do not necessarily arise from a use
of the product.” Id. at 5.
With respect to “information regarding a use of the product,” Lodsys urges that the
defendants’ inclusion of “prior” is inconsistent with the claims and specification which,
according to Lodsys, refer to information about ongoing and anticipated uses of the product – for
example, claims 2, 3 and 4 of the ‘565 patent which refer to information including “requests to
schedule maintenance,” “submission of a purchase order,” and “requests for interactive
assistance.”

Id. at 8.

Lodsys further notes that the specification discloses probing for

information during product use and anticipated uses of the product. Id.
The defendants urge that the specification explains that user opinion is formed from
actual “use of the commodity.” The defendants contend that the examples Lodsys points to
actually support their contention that user feedback about the commodity is being collected while
the user is using the commodity. The defendants urge that “opinions formed during use of the
product concern an actual use that has already occurred by the time the user provides his or her
feedback. It does not cover a situation in which the user has not yet used the commodity.”
Defendants’ Response [Dkt. No. 578] at 4. The defendants urge that is consistent with the
specification that describes a process in which the user provides feedback based on the user’s use
of the commodity. Id. The defendants argue that Lodsys’ proposed construction “improperly
covers opinions about a product that the user has not yet used and may never use.” Id. at 5.
The defendants raise a similar argument vis-à-vis “information regarding a use of the
product.” The defendants argue that “every example on which Plaintiffs rely relates to probing
for information formed based on users’ prior/actual use of the product.” Id. at 22.

The

defendants argue that “the alleged invention is providing a system for obtaining user feedback. A
user cannot provide feedback without having used the product because such a person would not
have been a user at all.” Id. at 22-23 (emphasis omitted).
Kaspersky’s originally proposed constructions were “[s]ame as the Defendants.” JCCS
[Dkt. No. 505] at 1, 3, 24. With respect to “user’s perception of the commodity,” the defendants
originally offered three proposed constructions: “Proposal 1,” “Proposal 2,” “Proposal 3.” In the
Rule 4-5(d) JCCC, the defendants did not repeat those three proposals, but Kaspersky now
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proposes “Proposal 3: ‘the user[‘s] opinion about the commodity formed from use of the
commodity, which does not include opinions on any content delivered by the commodity’ and
“Opinion about a commodity is not elicited simply by offering the commodity for sale.” JCCC
[Dkt. No. 615] at 4. Kaspersky now contends that phrase “information regarding a use of the
product” should be construed as “[i]nformation regarding how a product is used.” Because that
change was made after the conclusion of briefing, Kaspersky’s brief does not directly address
those proposed constructions.

Kaspersky, in its brief, however, contends that “[a] user’s

perception or opinion of software is not conveyed simply by a buying a license, if no other
information is given. * * * There is no suggestion anywhere in the Lodsys patents that merely
buying a license for a product would convey a user’s perception or opinion of that product. The
scope of the claims should be limited to user perception or opinion, which does not cover merely
buying a license.” Kaspersky’s Corrected Response [Dkt. No. 590] at 3.
Kaspersky further argues that during prosecution, in response to claim rejections over
prior art, the patent owner distinguished the claims from the prior art by making a distinction
between an opinion about the commodity itself, and an opinion about content provided by the
commodity. Namely, a prior art patent disclosed a kiosk that contained music CDs and asked
users to rate the CDs. The patent owner distinguished that patent by arguing that the user’s
perception was not about the commodity, namely the kiosk, but rather the kiosk’s content,
namely the CDs. Kaspersky urges that “[i]n view of the arguments made by the patent owner
during prosecution and reexamination, the scope of the term ‘user’s perception of the
commodity’ should be limited to the user’s perception of the commodity itself, excluding any
content conveyed by the commodity.” Kaspersky’s Corrected Response [Dkt. No. 590] at 3-4.
Lodsys urges in reply that “[d]efendants interpret the term ‘prior’ as being synonymous
with ‘actual,’ but concede that the user information described in the claim phrases can be merely
‘formed based on’ the user’s actual use of the product, which Defendants interpret to include
information such as ‘requests to schedule maintenance,’ ‘submission of a purchase order,’ and
‘requests for interactive assistance.’ * * * While Defendants’ expansive interpretation of their
own constructions resolves much of the substantive dispute between the parties regarding the
claim phrases’ meaning, it also illustrates that their constructions do not clarify, but rather
obscure, the plain meaning of the claim phrases.” Lodsys’ Reply [Dkt. No. 591] at 1. Lodsys
further urges that “even Defendants’ expansive interpretation of their own constructions risks
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improperly limiting the claim phrases to exclude other examples in the specification such as
obtaining information from a user about anticipated uses of the product.” Id. at 2.
4. Discussion
Once again, “the words of a claim ‘are generally given their ordinary and customary
meaning.’ * * * [T]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,
i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313.
Lodsys notes that the common meaning of “perception” relates to the result of using
human senses. Lodsys’ Brief [Dkt. No. 555] at 5 (pointing, inter alia, to “perception” explained
as “1. The act, process, or result of perceiving. 2. The ability to perceive: understanding or
insight,” and the meaning of “perceive” as “1. To become aware of directly by the senses, esp. to
see or hear. 2. To achieve understanding or awareness of.” Webster’s II New Riverside Desk
Dictionary [Dkt. No. 555-6] ECF 3. Another source similarly describes “perception” as “1. The
ability to see, hear, or become aware of something through the senses. 2. The state of being or
process of becoming aware of something in such a way.”

http://www.google.com (define

perception). See also http://dictionary.reference.com/browse/perception, http://www.merriamwebster.com/dictionary/perception,

(similar

descriptions),

http://www.bing.com/Dictionary/Search?q=define+perception (“1. perceiving: the process of
using the senses to acquire information about the surrounding environment or situation ‘the
range of human perception’ 2. result of perceiving: the result of the process of perception ‘After
watching the experiment closely, he noted his perceptions in his lab notebook.’ 3. impression: an
attitude or understanding based on what is observed or thought ‘a news report that altered the
public’s perception of the issue. * * * Synonyms: view, opinion, reading, take, slant, assessment,
experience, picture * * *.”
Lodsys is correct that the specification uses “perception” similarly in a broad sense
relating to the result of using human senses. Lodsys’ Brief [Dkt. No. 555] at 4-5. Everyday
experience confirms that one may form a “perception” or an “opinion” based on one or more of
the human senses that does not necessarily require “prior” or “actual” use. For example, one
may form a “perception” or “opinion” based on the human sense of “sight” alone without any
“prior” or “actual” use of a “commodity.” Indeed, one may have a “perception” or “opinion”
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about the color of a device, for example a computer or computer component, or the aesthetic
design or shape of a product, that has no direct relationship to how such product may be actually
used – a white Apple iPad® more or less functions identically to a black Apple iPad®, but one
may have a “perception” or “opinion” based on color alone – or one may form a “perception” or
“opinion” of a current “smartphone,” or computer, or computer tablet, based on the aesthetic
design alone without regard to how the same actually functions in use. Or one may form a
“perception” or “opinion” of a product or service from advertisements or a colleague’s
comments. Or from hearing a description – for example, “if a product was able to * * *, would
that be a product you would consider purchasing? Why or why not?”
The defendants have not shown where the same are excluded by the description of the
invention provided in the specification, or the express language of the claims. In short, the
invention described in the patents-in-suit permits feedback on a variety of topics related to
various products and services. In some instances, that feedback may require “actual” or “prior”
use to answer the queries addressed to the “user.” In other instances, though, those queries may
solicit feedback that does not require any “actual” or “prior” use.
Accordingly, the Court declines to adopt the defendants’ proposed construction of
“user[‘s] opinion about the commodity formed from prior [or actual] use of the commodity.”
The Court also declines to adopt Kaspersky’s proposed construction of “the user[‘s] opinion
about the commodity formed from use of the commodity, * * *.” Both require prior or actual
“use” of the commodity – and such use is not required by the language of the claims or the
specification.
With respect to Kaspersky’s belated proposed construction, “[o]pinion about a
commodity is not elicited simply by offering the commodity for sale,” Kaspersky proposed that
construction after the close of briefing. Furthermore, that proposed construction appears to
simply further Kaspersky’s argument in its brief that “[a] user’s perception or opinion of
software is not conveyed simply by a buying a license, if no other information is given. * * * The
scope of the claims should be limited to user perception or opinion, which does not cover merely
buying a license,” Kaspersky’s Corrected Response [Dkt. No. 590] at 3. That, however, is an
issue reserved for determining infringement vel non. The subject phrase by its terms requires a

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“user’s perception” – whether that perception can be formed based on “merely buying a license”
is a question for another day.
With respect to “information regarding a use of the product,” again, the claim language is
“a use of the product,” not “prior use of the product.” In context, claim 1 of the ‘565 patent calls
for “configured to probe for information regarding a use of the product.” Certainly one may
“probe” for “information regarding a use of the product” that does not require “prior use” or
“actual use.” Or, stated differently, a user may clearly provide feedback information in the
nature of a user’s impression about “a use of the product” without “prior” or “actual” use.
People every day evaluate and form impressions of products (and services), and even make
purchasing decisions, based on sight alone, or with one or more of the other human senses,
without ever actually using the product or service. That all is well within the general disclosures
of the patents-in-suit, i.e., the defendants have not persuasively shown that the patents-in-suit
require prior or actual use.
With respect to Kaspersky’s argument in its brief that, based on prosecution history
disclaimer, “the scope of the term ‘user’s perception of the commodity’ should be limited to the
user’s perception of the commodity itself, excluding any content conveyed by the commodity,”
Kaspersky’s Corrected Response [Dkt. No. 590] at 3-4, it is not readily apparent that Lodsys
contends otherwise. Indeed, it does not appear that Lodsys has specifically responded to that
argument. It is also noted that defendants asserted in their brief that “[p]laintiffs do not dispute
that, in the claimed system, ‘user[‘s] perception of the commodity’ does not include the user’s
perception of content delivered by the commodity. * * * For example, the user’s opinion must be
about a jukebox rather than the music played by that jukebox.” Defendants’ Response [Dkt. No.
578] at 3 n. 7. Lodsys has not contended otherwise. Accordingly, the Court does not currently
see that the parties have a dispute on that issue.
Lastly, the Court declines to adopt Lodsys’ proposed construction of “user[‘s] opinion
about the commodity, including attitude, needs, desires, uses, understanding, and complaints
with respect to the commodity.” The parties all seem to agree that the claim language – “user’s
perception” – may be interpreted as “user’s opinion.” Lodsys’ proposed “including” language
apparently stems from the defendants’ and Kaspersky’s proposed constructions. Those proposed

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constructions have been declined. Accordingly, there is no further need for such “including
* * *” construction. Nor is there any need to change “user’s perception” to “user’s opinion.”
In light of the foregoing, the parties’ dispute has been resolved and there does not appear
to be any need for further construction of either phrase.
G. “perception information”
1. Parties’ Proposed Constructions
The parties’ contentions:
Disputed
Term
“perception
information”

Claims
’078:
69

Lodsys

Defendants
This term is indefinite
under 35 U.S.C. §
112(2)

This term is not
indefinite under 35
U.S.C. § 112(2).

Kaspersky
This term is indefinite
under 35 U.S.C. §
112(2)

No construction
necessary
This term is
substantially identical
to the term
“information about the
user’s perception of the
commodity” in claim 1,
a substantial portion of
which is addressed by
the parties.
JCCC [Dkt. No. 615] at 5

2. The Parties’ Arguments
Lodsys notes that “perception information,” as used in claim 69 of the ‘078 patent, is
substantially identical to the phrases “information about the user’s perception of the commodity”
and “results of the two-way local interaction.” Lodsys’ Brief [Dkt. No. 555] at 5. Lodsys urges
that “not only is the claim phrase easily understood on its face, it is used in a manner that is
substantially the same as other phrases that Defendants and Kaspersky have had no difficulty
construing (i.e., ‘user’s perception of the commodity’ and ‘results’).” Id. at 6. Accordingly
Lodsys urges that the high standard for showing indefiniteness under § 112(2) has not been met.

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The defendants contend that “[t]he term ‘perception information’ appears only in claim
69 of the ‘078 patent. Nowhere else does the specification use the term or otherwise provide
guidance as to its construction. The term is thus indefinite because it is ‘insolubly ambiguous’ to
one skilled in the art.” Defendants’ Response [Dkt. No. 578] at 20. The defendants urge that
although “perception information” may be “substantially identical” to “information about the
user’s perception of the commodity” from claim 1 of the ‘078 patent, the phrases are not
identical and “perception information” requires a separate construction. Id. at 20-21.
The defendants argue that “perception information” cannot mean the same thing as
“information about the user’s perception of the commodity” because that construction would
read the “generating” limitation out of the claim. Namely, defendants argue, if the perception
information that is “transmit[ed]” in the third limitation of claim 69 was the “user’s perceptions”
there would be no need for “gener[ating] perception information based on user input in the
second limitation. Id. at 21. The defendants contend that “perception information” is something
not described anywhere in the patent that is “generat[ed]” “based on inputs of the users at the
respective user-interfaces.” Id. Accordingly, the defendants contend that the phrase renders
claim 69 “insolubly ambiguous” and indefinite under § 112(2).
Kaspersky does not separately argue the issue.
3. Discussion
The defendants are correct that the phrase “perception information” does not appear per
se in the specification. However, the constituent words “perception” and “information” appear
throughout the specification and claims. The Manual of Patent Examining Procedure (MPEP)
§ 2173.03, Correspondence Between Specification and Claims, advises:
To meet the definiteness requirement under 35 U.S.C. 112, second paragraph, the
exact claim terms are not required to be used in the specification as long as the
specification provides the needed guidance on the meaning of the terms (e.g., by
using clearly equivalent terms) so that the meaning of the terms is readily
discernable [sic. discernible] to a person of ordinary skill in the art.
MPEP § 2173.05(e), Lack of Antecedent Basis, similarly advises:
The mere fact that a term or phrase used in the claim has no antecedent basis in the
specification disclosure does not mean, necessarily, that the term or phrase is
indefinite. There is no requirement that the words in the claim must match those
used in the specification disclosure. Applicants are given a great deal of latitude in
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how they choose to define their invention so long as the terms and phrases used
define the invention with a reasonable degree of clarity and precision.
Although the Court is not bound by the MPEP, the Federal Circuit has characterized the MPEP
as being entitled to judicial notice as an official interpretation of statutes or regulations as long as
it is not in conflict therewith. See Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed.
Cir. 1995)(“ ‘The MPEP [is] commonly relied upon as a guide to patent attorneys and patent
examiners on procedural matters.’ While the MPEP does not have the force of law, it is entitled
to judicial notice as an official interpretation of statutes or regulations as long as it is not in
conflict therewith.”). See also¸Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed.
Cir. 2002)(“The Guidelines, like the Manual of Patent Examining Procedure (‘MPEP’), are not
binding on this court, but may be given judicial notice to the extent they do not conflict with the
statute.”).
Thus, the fact that the phrase “perception information” does not appear per se in the
specification does not necessarily mean that claim 69 is indefinite. See also, Energizer Holdings
v. U.S. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006)(“When the meaning of the
claim would reasonably be understood by persons of ordinary skill when read in light of the
specification, the claim is not subject to invalidity upon departure from the protocol of
‘antecedent basis.’ The requirement of antecedent basis is a rule of patent drafting, administered
during patent examination. * * * Whether this claim, despite lack of explicit antecedent basis for
‘said zinc anode,’ nonetheless has a reasonably ascertainable meaning must be decided in
context.” (paragraphing omitted).
Turning to the question of indefiniteness, “[b]ecause claims delineate the patentee’s right
to exclude, the patent statute requires that the scope of the claims be sufficiently definite to
inform the public of the bounds of the protected invention, i.e., what subject matter is covered by
the exclusive rights of the patent.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1249 (Fed. Cir. 2008). The Court believes that standard has been met here.

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The Federal Circuit has also advised that because issued patents are entitled to a statutory
presumption of validity under § 282, the standard for finding that a claim is indefinite (and
therefore invalid) is high, namely that a claim must be found to be “insolubly ambiguous:”
We have not insisted that claims be plain on their face in order to avoid
condemnation for indefiniteness; rather, what we have asked is that the claims be
amenable to construction, however difficult that task may be. If a claim is insolubly
ambiguous, and no narrowing construction can properly be adopted, we have held
the claim indefinite. If the meaning of the claim is discernible, even though the task
may be formidable and the conclusion may be one over which reasonable persons
will disagree, we have held the claim sufficiently clear to avoid invalidity on
indefiniteness grounds.
Exxon Research and Engineering Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
“By finding claims indefinite only if reasonable efforts at claim construction prove futile, we
accord respect to the statutory presumption of patent validity * * *.” Id.
Claim 69 of the ‘078 patent calls for:
69. A method for gathering information from units of a commodity in different
locations, each unit of the commodity being coupled to a remote database on a
network, the method comprising:
eliciting user perceptions of respective units of the commodity through interactions
at a user-interface of the respective unit;
generating perception information based on inputs of the users at the respective
user-interfaces;
transmitting the perception information to the remote database;
receiving the transmitted perception information from different units of the
commodity; and
collecting and storing the received information at the remote database.
Contrary to the defendants’ contentions, construing “perception information” as the “user
perceptions” that were “elicited” in the first limitation does not “read out” the “generating step,”
or render “generating” surplusage. User perceptions are “elicited” in the first limitation. The
second limitation says that “perception information” is “generat[ed]” “based on inputs of the
users at the respective user-interfaces.” “Eliciting” user perception is substantively different
from “generating” information based on the user’s inputs.

Similarly, “transmitting” the

information in the third limitation is substantively different from “eliciting” and “generating”
that information.
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Quite simply, as explained in the specification abstract, “[i]n an exemplary system,
information is received at a central location from different units of a commodity. The
information is generated from two-way local interactions between users of the different units of
the commodity and a user interface in the different units of the commodity. The interactions
elicit from respective users their perceptions of the commodity.” ‘078 patent, abstract. The
“perception information based on inputs of the users at the respective user-interfaces” reflects the
“user perceptions” “elicit[ed]” in the first limitation.
Merely finding that a claim is amenable to construction does not necessarily end the
inquiry.

“In and of itself, a reduction of the meaning of a claim term into words is not

dispositive of whether the term is definite * * * And if reasonable efforts at claim construction
result in a definition that does not provide sufficient particularity and clarity to inform skilled
artisans of the bounds of the claim, the claim is insolubly ambiguous and invalid for
indefiniteness.” Biosig Instruments, Inc. v. Nautilus, Inc., ___ F.3d. ___, ____ (Fed. Cir. 2013),
quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)
(“Star Scientific I”) (citations omitted). “Thus, a construed claim can be indefinite if the
construction remains insolubly ambiguous * * *.” Biosig, ___ F.3d at ___, quoting Star
Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed. Cir. 2011) (“Star
Scientific II”).
Here, “perception information” is amenable to construction, and that construction,
namely “perception information based on inputs of the users at the respective user-interfaces”
reflects the “user perceptions” “elicit[ed]” in the first limitation, is not insolubly ambiguous.
The Court concludes that “perception information” does not render claim 69 of the ‘078
patent insolubly ambiguous or indefinite under § 112(2).

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H. “elicit” / “probe”
1. Parties’ Proposed Constructions
The parties’ proposed the following contested constructions:
Disputed
Term

Kaspersky

Claims

Lodsys

Defendants

“elicit”

’078:
1, 22,
38, 60,
69, 74

No construction
necessary

“actively request”

“Ask for”

“probe”

’565:
1, 15,
27

No construction
necessary

“actively request”

“Ask for”

JCCC [Dkt. No. 615] at 5

2. The Core Disagreement and the Parties’ Arguments
The core disagreement is whether “elicit” and “probe” cover purely passive activity.
Lodsys urges that “elicit” includes anything that provokes a response, whether that is an
active request or not. Lodsys’ Brief [Dkt. No. 555] at 9. In the JCCS, the defendants listed the
Webster’s Ninth New Collegiate Dictionary 404 (1990), as extrinsic evidence that the defendants
would rely on in connection with “elicit.” JCCS [Dkt. No. 505] at 27. Lodsys urges that
dictionary’s definition of “elicit,” namely “1 a: to draw forth or bring out (something latent or
potential) b: to derive (as truth) by logical processes 2: to call forth or draw out (a response or
reaction),” illustrates that “even the extrinsic evidence referenced by Defendants in support of
their construction actually describes that the term ‘elicit’ is broader than ‘actively request.’ ”
Lodsys’ Brief [Dkt. No. 555] at 9.
The defendants urge that “the parties dispute whether the asserted claims can be
expanded to encompass passively obtaining information without a user’s involvement.”
Defendants’ Response [Dkt. No. 578] at 27. Defendants contend that “figure 2 shows an
illustration of a Customer-Based Product Design Module (CB-PD Module) that actively requests
information from a user by asking ‘How much do you like or dislike the method that you just
used to program the fax machine’s user settings?’ For that reason, ‘elicit’ must be construed as

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actively requesting and not simply passively obtaining information without the user’s
involvement.” Id. at 28.
The defendants further contend the applicant distinguished “elicit” from a passive
request, for example in claim 5 calling for “[t]he system of claim 1 in which the communication
element also carries information from a passive probe that monitors the user’s use of the
commodity.” Id. The defendants urge that the specification describes Customer Probes as
“eliciting” data through prompts and questions. The defendants further urge that by not using the
term “passive” in the present claims, the inventor intended “elicit” to mean “actively request.”
Id. The defendants also contend that “probe” in the ‘865 patent should be construed the same as
“elicit.” Id. at 28-29.
Kaspersky did not propose a construction for either “elicit” or “probe” in the JCCS [Dkt.
No. 505] at 26-28. Kaspersky did, however, propose that “passive probe” should be construed as
“a device or a program that gathers information about a unit of a commodity without requesting
user input.” Id. at 28.
In reply to the defendants’ contention, Lodsys agrees that “elicit” and “probe” exclude
passive activity (“as Defendants concede the scope of the terms merely excludes ‘passively
obtaining information without a user’s involvement.’ * * * Plaintiff agrees.”). Lodsys’ Reply
[Dkt. No. 591] at 3. However, Lodsys urges that “construing these common terms to mean
‘actively request’ would only improperly narrow or obscure the terms for the jury.” Id.
Lodsys urges that consistent with the common dictionary meaning of the terms, the
specification explains that the “invention may draw out information by providing users with the
option to perform ‘Customer Initiated Interactions (CII) [which] are product Development
Interactions (DI) that are triggered by the Customer.’ ” Lodsys’ Reply [Dkt. No. 591] at 3-4.
Lodsys contends that examples include “interactive evaluations and suggestions,” a “help
button,” an “electronic suggestion pad,” or “On-line Customer Support.” Lodsys urges that
“[s]uch interactions initiated by the user might not be captured by Defendants’ proposed
construction: ‘actively request,’ depending on the meaning of the phrase ‘actively request.’ ” Id.
at 4.
Lodsys also points to the “electronic suggestion pad” which Lodsys says is “a free-form
entry area for users to enter information they want to report (such as problems and suggestions),
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which does not include specific ‘requests’ of the user for information * * *.” Id. Lodsys urges
that “[t]hese examples illustrate that (as the parties agree) the scope of the terms ‘elicit’ and
‘probe’ merely excludes ‘passively obtaining information without a user’s involvement.’
However, the examples also illustrate that it would be unwarrantedly narrowing (or at least
confusing) to supplant these well-understood terms with the phrase ‘actively request.’ ” Id.
3. Discussion
The parties thus agree that “elicit” and “probe” exclude “passively obtaining information
without a user’s involvement.” On the other hand, the defendants have not pointed to a reference
source that equates “elicit” and/or “probe” with “actively request.” Rather, the references cited
by the parties, as well as other similar references, indicate that “elicit” connotes “1. Evoke or
draw out (a response or fact) from someone by actions or questions: ‘their moves elicit
exclamations of approval’. 2. Draw forth (something that is latent or potential) into existence:
‘war elicits all that is bad in us’.” www.google.com (define elicit).

See also

http://dictionary.reference.com/browse/elicit (“to draw or bring out or forth; educe; evoke: to
elicit

the

truth;

to

elicit

a

response

with

a

question.”),

http://dictionary.reference.com/browse/elicit (“1. a. To bring or draw out (something latent);
educe. b. To arrive at (a truth, for example) by logic. 2. To call forth, draw out, or provoke (a
reaction, for example).”).
Lodsys is also correct that construing “elicit” and/or “probe” to mean “actively request”
at least raises a question whether examples discussed in the specification would be excluded.
The same question is raised vis-à-vis Kaspersky’s proposed construction of “[a]sk for.”
Although the defendants are correct that the specification discusses examples in which the
invention may be used to actively query customers about their perceptions, the specification also
discusses examples in which that is less clear, as Lodsys notes.
The defendants said in their brief that “the parties dispute whether the asserted claims can
be expanded to encompass passively obtaining information without a user’s involvement.”
Defendants’ Response [Dkt. No. 578] at 27. That dispute has been resolved. Lodsys agrees that
“elicit” and “probe” exclude “passively obtaining information without a user’s involvement.”
Accordingly, it appears to the Court that the parties’ dispute has been resolved, and that no
further construction is necessary.
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I. “component capable of managing the interactions of the users in different locations and
collecting the results of the interactions at the central location”
1. Parties’ Contentions
The parties’ contentions are:
Disputed
Term
“component
capable of
managing the
interactions of
the users in
different
locations and
collecting the
results of the
interactions at
the central
location”

Claims
’078:
1, 60

Kaspersky

Lodsys

Defendants

This term is not
governed by 35 U.S.C.
§ 112(6).

This term is a means
plus function limitation
subject to 35 U.S.C.
§ 112, ¶ 6 and is
indefinite under 35
U.S.C. § 112(2).

Nevertheless, in the
event the Court holds
that § 112(6) governs
this term, the term is
not indefinite under 35
U.S.C. § 112(2), as the
specification discloses
sufficient structure,
referenced in the Joint
Claim Construction and
Prehearing Statement
[Dkt. No. 505].

Same as Defendants.

Function: managing the
interactions of users in
different locations and
collecting the results of
the interactions at the
central location
Corresponding
Structure: none for
“managing the
interactions of the users
in different locations”

JCCC [Dkt. No. 615] at 6

2. The Parties’ Arguments
As reflected above, the parties’ dispute centers on whether “component capable of
managing the interactions of the users in different locations and collecting the results of the
interactions at the central location” should be construed as a means-plus-function limitation
governed by § 112(6), and if so, what is the “corresponding structure” disclosed in the
specification that is “clearly linked” to the claimed function.

The defendants (and now

Kaspersky) contend that the specification does not disclose any “corresponding structure” that is
“clearly linked” to the claimed function, and therefore claims 1 and 60 of the ‘078 patent are
indefinite under § 112(2) and invalid.

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3. Discussion
a) Background
Under § 112(6):
An element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material or acts in
support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.
Section 112(6) thus allows “an applicant [to] describe an element of his invention by the result
accomplished or the function served, rather than describing the item or element to be used * * *.”
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 27 (1997). Congress added
this language to the Patent Act of 1952 to overcome restrictions imposed by Halliburton Oil Well
Cementing Co. v. Walker, 329 U.S. 1, 9 (1946). See P.J. Federico, Commentary on the New
Patent Act, Preface to 35 U.S.C.A. (1954) (reprinted at 75, J. Pat. & Trademark Off. Soc. 161
(1993)).
The general hallmarks of a means-plus-function limitation are: (1) the limitation is
expressed in terms using the words “means” or “step,” which raises a presumption of an intent to
invoke § 112(6), Al-Site Corp. v. VSL Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999) (“[i]f the
word ‘means’ appears in a claim element in combination with a function, it is presumed to be a
means-plus-function element”); see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
1584 (Fed. Cir. 1996); (2) a specified function follows the “means” or “step” and is linked to the
“means” or “step,” York Products, Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
1574 (Fed. Cir. 1996), see also Wenger Mfg., Inc. v. Coating Mach. Sys., Inc. and Vector Corp.,
239 F.3d 1225, 1232 (Fed. Cir. 2001) (stating that “a limitation that uses the word ‘means’ but
does not recite a function that corresponds to the means does not invoke § 112, ¶ 6”); and (3)
there is insufficient structure, material, or acts set out in the claim for achieving the specified
function. Apex v. Raritan, 325 F.3d 1364, 1372 (Fed. Cir. 2003); Cole v. Kimberly-Clark Corp.,
102 F.3d 524, 530-31 (Fed. Cir. 1996), cert. denied, 522 U.S. 812 (1997).

“Means-plus-

function” limitations are construed, as required by § 112(6), to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof. In re Donaldson, 16 F.3d
1189 (Fed. Cir. 1994)(en banc).

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The Court must decide as a matter of law whether a particular term or phrase is governed
by § 112(6). Personalized Media Communications LLC v. United States Int’l Trade Comm’n,
161 F.3d 696, 702 (Fed. Cir. 1998); Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294
(Fed. Cir. 1999), cert. denied, 528 U.S. 1115 (2000).
“Once a court concludes that a claim limitation is a means-plus-function limitation, two
steps of claim construction remain: 1) the court must first identify the function of the limitation;
and 2) the court must then look to the specification and identify the corresponding structure for
that function.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007); see
also Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006).
“The determination of the claimed function and corresponding structure of a means-plusfunction claim limitation is a question of law, reviewed de novo.” ACTV Inc. v. Walt Disney
Co., 346 F.3d 1082, 1087 (Fed. Cir. 2003). Thus, Markman-type claim construction of a meansplus-function limitation requires that the Court first identify the stated function and, secondly,
identify the corresponding structure, material, or acts described in the specification that is clearly
linked to or associated with that function.
The Federal Circuit has emphasized that in performing the first step, “a court may not
construe a means-plus-function limitation ‘by adopting a function different from that explicitly
recited in the claim.’ ” JVW Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1331
(Fed. Cir. 2005), quoting Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258
(Fed. Cir. 1999). That is because “[a]n error in identification of the function can improperly alter
the identification of structure in the specification corresponding to that function.” Id. at 1258.
The Federal Circuit has explained that “[w]e consult the claim language to determine the
function of the limitation * * * We then consult the written description to determine the
corresponding structure necessary to accomplish the stated function.” Gemstar-TV Guide Int’l,
Inc. v. United States Int’l Trade Comm’n, 383 F.3d 1352, 1361 (Fed. Cir. 2004) (citations and
paragraphing omitted). The stated function is that explicitly recited in the claim. Micro Chem.
Inc., 194 F.3d at 1250, 1258 (although § 112(6) “requires both identification of the claimed
function and identification of the structure in the written description necessary to perform that
function,” the “statute does not permit limitation of a means-plus-function claim by adopting a
function different from that explicitly recited in the claim,” nor “does the statute permit
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incorporation of structure from the written description beyond that necessary to perform the
claimed function.”); Lockheed Martin Corp. v. Space Sys./Loral, Inc., 249 F.3d 1314, 1324 (Fed.
Cir. 2001) (a means-plus-function limitation cannot be broadened by “reading out” a function).
See generally, Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003); Overhead Door Corp. v.
Chamberlain Group, Inc., 194 F.3d 1261 (Fed. Cir. 1999); Chiuminatta Concrete Concepts, Inc.
v. Cardinal Indus., Inc., 145 F.3d 1303, 1306 (Fed. Cir. 1998).
After identifying the claimed function, the Court must identify the “corresponding
structure” disclosed in the specification that is “clearly linked” to the recited function.
Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001)
(quotes omitted) (“Structure disclosed in the specification is ‘corresponding’ structure only if the
specification or prosecution history clearly links or associates that structure to the function
recited in the claim,” quoting B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.
Cir. 1997); see also Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir.
2003) (“Under section 112, paragraph 6, structure disclosed in the specification is
‘corresponding’ structure ‘only if the specification or the prosecution history clearly links or
associates that structure to the function recited in the claim.’ “).
“While corresponding structure need not include all things necessary to enable the
claimed invention to work, it must include all structure that actually performs the recited
function.” Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005), citing Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1119 (Fed. Cir. 2002). On the other hand, “a court may not import into the claim structural
limitations from the written description that are unnecessary to perform the claimed function.”
Acromed Corp. v. Sofamor Danek Group, 253 F.3d 1371, 1382 (Fed. Cir. 2001); Micro Chem.
Inc., 194 F.3d at 1258 (“The statute does not permit limitation of a means-plus-function claim by
adopting a function different from that explicitly recited in the claim. Nor does the statute permit
incorporation of structure from the written description beyond that necessary to perform the
claimed function.”).

“When multiple embodiments in the specification correspond to the

claimed function, proper application of § 112, ¶ 6 generally reads the claim element to embrace
each of those embodiments.” Micro Chem, Inc., 194 F.3d at 1258.

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The Federal Circuit has advised that the specification must be read as a whole to
determine the structure for performing the claimed function. Budde v. Harley-Davidson, Inc.,
250 F.3d 1369, 1379-80 (Fed. Cir. 2001) (citations omitted) (“The specification must be read as
a whole to determine the structure capable of performing the claimed function. In construing
terms used in patent claims, it is necessary to consider the specification as a whole, and to read
all portions of the written description, if possible, in a manner that renders the patent internally
consistent. In addition, it is important to construe claim language through the ‘viewing glass’ of
a person skilled in the art.”) However, the Federal Circuit has also cautioned that structure
identified as “corresponding structure” must actually perform the recited function, rather than
merely enable the pertinent structure to perform the recited function. Asyst Techs., Inc. v.
Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (“The corresponding structure to a function
set forth in a means-plus-function limitation must actually perform the recited function, not
merely enable the pertinent structure to operate as intended * * *.”).
b) The Present Limitation
The Court concludes that “component capable of managing the interactions of the users
in different locations and collecting the results of the interactions at the central location” does not
constitute a means-plus-function limitation governed by § 112(6). Accordingly, the Court does
not reach the remaining steps, namely identifying the recited function and the “corresponding
structure” disclosed in the specification and “clearly linked” to the claimed function.
First, the limitation does not use the word “means” and therefore enjoys a strong
presumption that the limitation does not constitute a means-plus-function limitation governed by
§ 112(6). See Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed.
Cir. 2011)(“The use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6 governs
the construction of the claim term. * * * Conversely, where, as here, the claim language does not
recite the term ‘means,’ we presume that the limitation does not invoke § 112, ¶ 6. * * * When a
claim term lacks the word ‘means,’ the presumption can be overcome if the challenger
demonstrates that ‘the claim term fails to “recite sufficiently definite structure” or else recites
“function without reciting sufficient structure for performing that function.” ’ ”); Lighting World
v. Birchwood Lighting, 382 F.3d 1354, 1358 (Fed. Cir. 2004)(same).

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The Federal Circuit has emphasized that “the presumption flowing from the absence of
the term ‘means’ is a strong one that is not readily overcome.” Inventio, 649 F.3d at 1356,
Lighting World, 382 F.3d at 1358. (“Our cases make clear, however, that the presumption
flowing from the absence of the term ‘means’ is a strong one that is not readily overcome.”).
Second, the Court must “assess whether a claim limitation recites sufficient structure to
avoid means-plus-function claiming from the vantage point of an ordinarily skilled artisan. * * *
To this end, ‘considering intrinsic and extrinsic evidence is usually helpful [in determining
whether] a claim limitation is so devoid of structure that the drafter constructively engaged in
means-plus-function claiming.’ ” Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc.,
711 F.3d 1348, 1364 (Fed. Cir. 2013).
Here, “component” carries a common structural connotation as does “circuit,” i.e.,
dictionary definitions for “component,” like dictionary definitions for “circuit,” indicate that
“component” refers to structure.

See Power Integrations, 711 F.3d at 1364 (“We have

previously held on several occasions that the term ‘circuit’ connotes structure.”), MIT v. Abacus
Software, 462 F.3d 1344, 1355 (Fed. Cir. 2006) (“[D]ictionary definitions establish that the term
‘circuitry,’ by itself, connotes structure.”). In Lighting World, addressing the term “connector,”
the Federal Circuit explained that “we have looked to the dictionary to determine if a disputed
term has achieved recognition as a noun denoting structure, even if the noun is derived from the
function performed. * * * Dictionary definitions in this case disclose that the term ‘connector’
has a reasonably well-understood meaning as a name for structure, even though the structure is
defined in terms of the function it performs. ‘Connector’ is defined by Webster’s Third New
International Dictionary 481 (1993), as ‘something that connects.’ ” 382 F.3d at 1360.
Available dictionary definitions indicate that “component” similarly connotes structure.
See e.g., MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (5th ed. 1994) at 424
(“component” in the electrical field: “Any electrical device, such as a coil, resistor, capacitor,
generator, line, or electron tube, having distinct electrical characteristics and having terminals at
which

it

may

be

connected

to

other

components

to

form

a

circuit”),

http://dictionary.reference.com/browse/component (defining “component,” inter alia, as “a part
of a mechanical or electrical system”), http://www.thefreedictionary.com/component (“A part of
a mechanical or electrical complex”), http://www.merriam-webster.com/dictionary/component
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(“Examples

of

COMPONENT

●

the

Filed 06/14/13 Page 68 of 102 PageID #: 13287

components

of

an

electric

circuit

* * *”),

http://oxforddictionaries.com/definition/english/component (“a part or element of a larger whole,
especially a part of a machine or vehicle”).
In Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012), the
Federal Circuit advised that “we will not apply § 112, ¶ 6 if the limitation contains a term that ‘is
used in common parlance or by persons of skill in the pertinent art to designate structure.’ ”
The Federal Circuit has also advised that “[i]n considering whether a claim term recites
sufficient structure to avoid application of section 112 ¶ 6, we have not required the claim term
to denote a specific structure. Instead, we have held that it is sufficient if the claim term 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.
In Lighting World, the Federal Circuit further advised that “[t]hus, while it is true that the
term ‘connector assembly’ does not bring to mind a particular structure, that point is not
dispositive. What is important is whether the term is one that is understood to describe structure,
as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as
the name of structure and is simply a substitute for the term ‘means for.’ ” 382 F.3d at 1360.
A “nonce” word is one “[c]oined for or used on one occasion.” www.google.com (define
nonce). See also, http://www.merriam-webster.com/dictionary/nonce (“occurring, used, or made
only

once

or

for

a

special

occasion

<a

nonce

word>“),

http://oxforddictionaries.com/us/definition/american_english/nonce (“(of a word or expression)
coined for or used on one occasion”). The word “component” is not a “nonce” word, but rather a
common English language word that bears a structural connotation. Although “component,” like
“circuit” and “connector,” does not identify specific structure, that, as noted, is not required.
Also, that the resulting limitation is broad is not decisive. The Federal Circuit in Lighting
World explained that “[w]hile the terms ‘connector’ and ‘connector assembly’ are certainly
broad, and may in the end include any structure that performs the role of connecting, the same
could be said of numerous other terms, such as ‘clamp,’ or ‘clip,’ or even ‘support member,’
another term that is used in the [patent-in-suit]. Those terms are routinely treated as structural by

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patent practitioners and courts, and we conclude that there is no reason to treat the term
‘connector assembly’ any differently for purposes of section 112 ¶ 6.” 382 F.3d at 1361.
Third, the Federal Circuit has advised that “[t]he proper inquiry is whether the claim
limitation itself, when read in light of the specification, connotes to the ordinarily skilled artisan
sufficiently definite structure for performing the identified functions.” Power Integrations, 711
F.3d at 1364. See also, Inventio, 649 F.3d at 1356-57 (claim is not read in isolation, but in
conjunction with the specification to determine whether § 112(6) applies).
Here, the specification indicates that the “component capable” limitation connotes
structure to one of ordinary skill in the art. Per the terms of the claim, the “component”
“manag[es] the interactions of the users in different locations” and “collect[s] the results of the
interactions at the central location”

Lodsys notes that the specification discloses various

“components” for doing so.
One embodiment described in the specification that Lodsys points to is the vendor’s
computer that includes an authoring system for designing or updating a unit’s interactions,
namely “managing interactions,” and a reporting system that receives the various results of the
interactions from different units, namely “collecting the results.” ‘078 patent, col. 9, lines 50-67,
col. 12, lines 43-56. Lodsys’ Brief [Dkt. No. 555] at 14-16, Lodsys’ Reply [Dkt. No. 591] at 8-9.
Additionally, in one embodiment Lodsys points to, the “Instrument Design Repository” (“IDR”),
described at col. 25, line 51 through col. 32, line 18, manages the user interactions, including the
user interface the authoring system may provide, (col. 26, line 14-col. 28, line 27, Fig. 21), the
options available to a user of the authoring system (col. 27, lines 1-22), the triggers that are
available to a user (col. 28, lines 16-64), the commands used to download authored interaction
onto a CB-PD module (col. 30, lines 30-60), and how the IDR may be used (col. 31, line 65-col.
32, line 18).
The

specification

also

discloses,

Lodsys

notes,

that

the

“Customer

Data

Reader/Programmer” (CDRP) manages user interactions. The specification explains that the
CDRP is a “hardware device used in the collection and/or transmission of Aggregate Customer
Desires (ACD) data to a Vendor, and in programming the CB-PD Module.” ‘078 patent, col. 16,
lines 41-44. Lodsys notes that “[t]he CDRP acts, in some embodiments, as a component that
downloads new interactions on to a CB-PD Module (managing the interactions) and retrieves its
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data to be stored centrally (collecting the results). Col. 21, l. 45–Col. 22, l. 50. The interactions
and data can also be exchanged via a removable chip (Col. 23, ll. 1-10), a modem and telephone
line (Col. 25, ll. 40-49), or any other communication method. Col. 24, ll. 1-11.” Lodsys’ Brief
[Dkt. No. 555] at 15.
Lodsys further notes that “[i]n other places, the specification describes the component as
the Customer-Based Product Design Report (“CB-PDR”). See, e.g., Col. 47, l. 11–Col. 49, l. 61.
For one embodiment, the specification describes the structures for transmission (removable
chips, modems, or other methods as described, supra) as well as the steps necessary for that
transmission. Col. 47, ll. 12-34. Another embodiment describes the claim’s component for
managing customer interactions and collecting results as ‘one or more computers at the Vendor
660 in FIG. 17 having an input via telephone 116 in FIG. 4 or other means for receiving
Aggregate Customer Desires (ACD) data 378.’ Col. 49, ll. 58-61. One embodiment’s process for
receiving and collecting the results is depicted in detail in Figures 11-13. See also Col. 49, l. 57–
Col. 51, l. 2.” Lodsys’ Brief [Dkt. No. 555] at 15-16.
The defendants urge that “[n]one of the three embodiments identified by Plaintiffs – i.e.,
(1) the ‘Instrument Design Repository (IDR)’; (2) ‘Customer Data Reader/Programmer
(CDRP)’; and (3) ‘Customer Based Product Design Report (CB-PDR)” – denotes an algorithm
or other analogous structure for performing the ‘collecting’ and ‘managing’ functions. Rather,
these embodiments recite nothing more than a ‘black box’ that implements various functions in
an undisclosed manner,” Defendants’ Response [Dkt. No. 578] at 23-24, citing Biomedino, LLC
v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
In Biomedino, the claims called for “control means for automatically operating said
valving.” The claims used the word “means” and thus were subject to the presumption that those
claims recited means-plus-function limitations governed by § 112(6). Biomedino argued that
“control” recited sufficient structure to overcome that presumption.
disagreed:

The Federal Circuit

“As the district court noted, the ‘reference to “control” is simply an adjective

describing “means:” [sic] it is not a structure or material capable of performing the identified
function.’ * * * We agree with the district court and hold that Biomedino has not rebutted the
presumption that § 112, ¶ 6 applies to ‘control means.’ ” 490 F.3d at 950.

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The question then became whether Biomedino had disclosed “corresponding structure” in
the specification that was sufficient to perform the claimed function, and was clearly linked to
the claimed function. The Federal Circuit concluded that the specification was deficient. The
Federal Circuit noted that “the only references in the specification to the ‘control means’ are the
box labeled ‘Control’ in Figure 6 and a statement that the regeneration process may be
‘controlled automatically by known differential pressure, valving and control equipment,’ * * *.”
Id. The Federal Circuit concluded that such disclosure was insufficient to meet the requirements
of § 112(6). Id. at 951-53.
Unlike Biomedino, here the subject limitation does not use the word “means” and enjoys
the presumption that § 112(6) does not govern the limitation. Thus, in essence, the shoe is on the
other foot. Here, the defendants have the burden of overcoming that presumption. The portions
of the specification that Lodsys points to confirm that the presumption has not been overcome.
See Inventio, 649 F.3d at 1358-59.
With respect to the defendants’ argument that the three embodiments identified by
Lodsys do not perform both of the recited functions, Lodsys notes that the specification explains
that the systems can be combined into single units or divided into multiple units, as appropriate:
The operation of the Customer Design System (CDS) in FIG. 1 is already described
in the preferred embodiments as spanning multiple locations. The division points
between those locations may be moved, so that many of the connecting “lines”
between parts of this invention may become either local or long-distance lines. In
other words, many of the lines in the Figures between various parts and functions in
this invention may be within one physical unit or they may connect two or more
physical units.
Lodsys’ Reply [Dkt. No. 591] at 9, quoting ‘078 patent, col. 75, lines 19-27. Lodsys adds that
“[m]oreover, both the managing and collecting functions of the disclosed system may be
performed by ‘the Vendor’s computer.’ ” Lodsys’ Reply [Dkt. No. 591] at 9, citing ‘078 patent,
col. 9, lines 50-57 (managing); col. 76, lines 4-8 (collecting).
Once again, the Federal Circuit has advised that limitations not using the word “means”
are presumptively not means-plus-function limitations governed by § 112(6), and, although
rebuttable, that is a “strong” presumption, not easily overcome.

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The Court concludes that the defendants and Kaspersky have not overcome that
presumption here. Accordingly, the issue of whether the specification discloses “corresponding
structure” that is “clearly linked” to the claimed function is not reached.
J. “two-way local interaction”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed Term

Claims

“two-way local
interaction”

’078: 1,
24, 25,
46, 48,
49, 52,
60
’908:
37

Defendants

Kaspersky

“two-way
communication in the
same physical location”

“interaction between a
unit of the commodity
and the user by way of
the user interface in the
same physical location.”

Lodsys
“interactions between
the user and the unit at
the user’s location”

Defendants are
alternatively agreeable
to use of the term
“interaction” in place of
“communication” in the
claim construction.
JCCC [Dkt. No. 615] at 6

2. Claim Language and the Parties’ Arguments
Claim 1 of the ‘078 patent calls for:
1. A system comprising:
units of a commodity that can be used by respective users in different locations,
a user interface, which is part of each of the units of the commodity, configured to
provide a medium for two-way local interaction between one of the users and the
corresponding unit of the commodity, and further configured to elicit, from a user,
information about the user’s perception of the commodity,
a memory within each of the units of the commodity capable of storing results of
the two-way local interaction, the results including elicited information about user
perception of the commodity,
a communication element associated with each of the units of the commodity
capable of carrying results of the two-way local interaction from each of the units
of the commodity to a central location, and
a component capable of managing the interactions of the users in different locations
and collecting the results of the interactions at the central location. [emphasis
added]
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Initially, Lodsys urged that “[t]he primary dispute between Plaintiff and Defendants is
that Defendants’ proposed construction inexplicably restricts the term ‘interaction’ in the phrase
‘two-way local interaction’ to merely ‘communication.’ ” Lodsys’ Brief [Dkt. No. 555] at 30.
However, the defendants agreed to change “communication” to “interaction” in their proposed
construction, and urged that “[t]he dispute centers on whether the claimed interaction must be a
‘local’ one, as described in the patents and construed by Defendants.” Defendants’ Response
[Dkt. No. 578] at 32. The defendants say that their “construction, requiring ‘communication in
the same physical location’ properly recognizes that a ‘two-way local interaction’ does not
include a remote interaction (i.e., communication between different locations).” Id.
The defendants urge that the specification contrasts local interactions from remote
interactions. For example, the defendants contend, the specification discloses that “Customer
Probes (CP),” namely the prompts, questions etc. stored in a CB-PB module for interacting with
a customer, can be local or remote. Id., citing ‘078 patent, col. 26, lines 1-21. The defendants
urge that the patent discloses that local CPs reside on the product itself, while remote CPs are
located on a remote computer and must be downloaded prior to use. Id. The defendants contend
that a “local” interaction “is a communication in one physical location that does not require
remote communication – i.e., communication involving multiple physical locations.” Id.
The defendants further contend that their construction is consistent with the claims
which, they say, distinguish between local interactions and other interactions. Id. Defendants
point to claim 54 which refers to “a two-way interaction,” i.e., minus “local,” and provides that
interaction occurs “online between the unit of the facsimile equipment and a vendor of the
facsimile equipment.” The defendants urge that claim 54 is thus an example of a “non-local”
interaction. Id. at 33.
Defendants urge that Lodsys’ proposed construction is ambiguous in that it is unclear
whether “at the user’s location” modifies “interactions,” “user,” or “unit.” Defendants contend
that Lodsys is attempting to broaden the claims to cover non-local interactions, i.e., interactions
that occur between a user, a product and a web server. Id.
Lodsys replies that “Plaintiff agrees that the interaction must occur at the user’s location,
as shown by Plaintiff’s construction.” The only dispute is whether Defendants’ argument intends
to improperly exclude any remote connection from the process. As the specification repeatedly
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describes, interactions are sometimes downloaded to the units from a remote computer before
they are available to the user.” Lodsys’ Reply [Dkt. No. 591] at 18. Lodsys urges that is
illustrated by claim 54.
Claim 54 calls for:
54. A system comprising:
units of a facsimile equipment that can be used by respective users in different
locations,
a user interface which is part of each of the units and is configured to trigger a twoway interaction to occur on-line between the unit of the facsimile equipment and a
vendor of the facsimile equipment, the user interface being configured to generate
information about use of the unit by the user,
a communication element associated with each of the units capable of carrying
results of the two-way local interaction from each of the units to a central location,
and
a component capable of managing the interactions of the users in different locations
and collecting the results of the interactions at the central location. (emphasis
added)
The defendants had pointed to “a two-way interaction,” i.e., without “local,” in the second
limitation. Lodsys urges that “carrying results of the two-way local interaction from each of the
units to a central location” shows that “even though the interaction has an online aspect, it also
includes a ‘local interaction’ aspect.” Lodsys’ Reply [Dkt. No. 591] at 18.
Lodsys also notes the defendants’ reference to column 26 of the specification, but urges
that discussion “describes the interaction authoring system used by the vendor, not the unit of
commodity used by the user. Moreover, that discussion confirms that remote interactions/probes
may be downloaded, after which they become local interactions/probes. Col. 26, ll. 14-21.” Id.
at 33 n. 14.
3. Discussion
The Court concludes that “two-way local interaction” should be construed as
“interactions between the user and the unit at the user’s location.” That construction is consistent
with both the language of the claims and the specification.

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Both the defe
B
fendants’ and Kaspersky proposed constructio would a “in the same
d
y’s
d
ons
add
physical location,” with the obje
w
ective, appar
rently, of ex
xcluding any remote fun
y
nction. Doin so
ng
would be inconsisten with the sp
e
nt
pecification, and is not re
equired by th claim lan
he
nguage.
With respect to the def
W
t
fendants’ re
eliance on c
column 26, Lodsys is correct tha the
at
discussio relates to the interacti authorin system us by the ve
on
ion
ng
sed
endor. For e
example, co 26,
ol.
lines 1-12 explain:
2

Lodsys is also corre that the specificatio explains that remote interaction
i
ect
on
e
ns/probes ma be
ay
download after wh they become local interactions/
ded,
hich
i
/probes:

‘078 pate col. 26, lines 14-21.
ent,
l
Accordingly, Court conc
A
cludes that “two-way lo
“
ocal interact
tion” should be construed as
d
“interacti
ions between the user an the unit at the user’s l
n
nd
t
location.”

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K. “trigger event”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term
“trigger
event”

Claims

Lodsys

Defendants

’565:
1, 5, 7,
8, 10,
14, 15,
17, 19,
20, 22,
26, 27,
28

“occurrence of a
recognizable condition”

“an event that initiates
an action”

Kaspersky
Same as Defendants

JCCC [Dkt. No. 615] at 7

2. Discussion
Initially, Lodsys urged that the defendants’ proposed construction was inconsistent with
the claims and specification. Lodsys’ Brief [Dkt. No. 555] at 18-19. The defendants, however,
responded by noting, inter alia, that “an ‘event’ is not a ‘trigger event’ if it does not ‘trigger’ any
action beyond the knowledge that the event occurred. That action can be as simple as
incrementing a counter to as complex as initiating product development interactions by the
vendor of the product.” Defendants’ Response [Dkt. No. 578] at 10. Lodsys replied that “[t]he
parties apparently agree on the meaning of the term ‘trigger event.’ Defendants concede their
construction is met by any event that results in an action ‘as simple as incrementing a counter to
as complex as initiating product development interactions.’ * * * Plaintiff agrees, as this merely
acknowledges the operation of the invention described in the claim language following the term
‘trigger event.’ ” Lodsys’ Reply [Dkt. No. 591] at 9-10. Although Lodsys continued to advocate
its own construction, and characterized the defendants’ construction, inter alia, as
“unnecessary,” it nevertheless appears that the parties agree.
Accordingly, the Court concludes that “trigger event” should be construed as “an event
that initiates an action.” The Court declines to adopt Lodsys’ proposed construction because
“occurrence of a recognizable condition” may be an “event,” but not necessarily a “trigger
event.”
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L. “counter” / “increment a counter” / “if the counter exceeds a threshold”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term

Kaspersky

Claims

Lodsys

Defendants

“counter”

’565:
1, 5, 6,
14, 15,
17, 18,
26-29

“a memory location for
storing values that
represent the number of
occurrences of an
event”

“an instrument for
storing integers
permitting them to be
increased sequentially
to represent the number
of occurrences of an
event”

Same as Defendants

“increment a
counter”

’565:
1, 14,
15, 27

“update a counter to
reflect an increase in
the number of
occurrences of an
event”

“to sequentially
increase the numeric
value of a counter”

Same as Defendants

“if the counter
exceeds a
threshold”

‘565:
1, 15,
27

“if the counter’s value
meets a predefined
criteria”

“only when the counter
exceeds a
predetermined value”

Same as Defendants

JCCC [Dkt. No. 615] at 7

2. The Parties’ Arguments
With respect to “counter,” Lodsys urges that the claim language supports its proposed
construction. For example, claim 1 of the ‘565 patent calls for:
1. A unit, comprising: a memory; a transmitter; and a processor, coupled to the
memory and to the transmitter, configured to: monitor a product for an occurrence
in the product of a trigger event of a predefined plurality of trigger events,
increment a counter corresponding to the trigger event upon detection of the
occurrence of the trigger event, cause the display of a user interface, configured to
probe for information regarding a use of the product, if the counter exceeds a
threshold, cause the memory to store an input received from the user interface, and
cause the transmitter to transmit the input to a server.
Lodsys urges that, according to the foregoing emphasized language, “[a] counter must, therefore,
in some manner ‘represent the number of occurrences of an event.’ ” Lodsys’ Brief [Dkt. No.
555] at 21. Lodsys further urges that the specification “supports the notion of tracking many
types of events - for example, whether an event has occurred, how many times it has occurred,
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and even changes in the rate of use and the passage of time: * * *.” Id. at 21-22. Lodsys
contends that “[t]hus, a counter need only represent the number of occurrences of an event such
that the product may determine whether a threshold condition has been met. Such representations
could be integers, time values, true/false values, etc., depending on the type of trigger and
threshold involved: * * *.” Id. at 22.
Lodsys urges that the defendants’ proposed construction introduces unnecessary
limitations, such as that the counter may only hold integers (such as 1, 2, 3, etc.). Lodsys
contends that may apply to embodiments that track the “Nth use of a product,” but would
exclude other embodiments. Lodsys notes that an embodiment that runs an interaction “at
product installation would track whether the product was installed – a true or false result. Other
embodiments, according to Lodsys, track the passage of time, which is not necessarily an integer,
and yet other embodiments track a ratio of product uses to a period of time, i.e., the rate of use of
a product, which also may be a non-integer value. Lodsys’ Brief [Dkt. No. 555] at 22.
Lodsys further notes that the defendants’ proposed construction would limit “counters” to
being “increased sequentially.” Lodsys contends that “[n]othing in the specification requires that
a counter be increased instead of decreased (for example, counting down from 10 to 0, instead of
counting up from 0 to 10), or that a counter be modified by 1 at each trigger event. For example,
embodiments that track the passage of time might add or subtract an amount of time to represent
an additional span of time.” Id.
With respect to “increment a counter,” Lodsys urges that the defendants’ proposed
construction, in conjunction with their proposed construction for “counter,” would essentially
limit the claims to adding 1 to the counter’s value.

That, Lodsys says, would read out

embodiments disclosed in the specification. Some embodiments, Lodsys again notes, track
“passage of time, whether a product has just been installed, or whether a button has been pressed.
A counter that tracks these events would not necessarily do so by adding ‘1’ to its value.”
Lodsys’ Brief [Dkt. No. 555] at 23. Lodsys also points to embodiments used to track disposable
supplies and permit reorders when supplies fall below a certain level. Lodsys urges that the
defendants’ “sequential” limitation would readout those embodiments.

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With respect to “if the counter exceeds a threshold,” Lodsys urges that the defendants’
proposed construction “would require that the counter exceed a specific value, which contradicts
the specification and therefore should be rejected.” Id. at 24.
The defendants urge that a “counter” must be a component that “counts.” According to
the defendants, “Plaintiffs’ construction ignores the sequential aspect of counting by referring
only to storing a representative number irrespective of how the ‘counter’ arrives at that number.
But storing the number seven is not the same as counting to seven. Counting involves
incrementation; it does not involve, as Plaintiffs propose, oscillating between two states such as
true and false.” Defendants’ Response [Dkt. No. 578] at 13.
The defendants argue that the specification discloses that a counter stores incremental
iterations of integer values.

The defendants point to various portions of the specification

disclosing, for example, “A CB-PD Module in the typewriter would be programmed to interact
with the Customers or users (such as at every Nth time the unit is turned on, like the 10th and
each successive 100th time,” “A counter is incremented at each occurrence of that same trigger.
* * * [t]he actual triggers occur at specific instances when both the trigger increments the
counter, and that counter reaches specific values* * * [a]t each of those specific values, a
different trigger is fired and each are independent of the others (such as on the 2nd, 10th, 70th, and
95th use of a feature,” “Frequency of use (triggers are based on frequency of use, such as during
each Nth use of the product,” etc. Defendants’ Response [Dkt. No. 578] at 14.
The defendants further urge that their proposed construction matches contemporaneous
technical dictionary definitions “almost word for word.” Id. The defendants rely on: the IEEE
Standard Dictionary of Electrical and Electronics Terms 214 (4th ed. Nov. 3, 1988) (“an
instrument for storing integers, permitting these integers to be increased or decreased
sequentially by unity or by an arbitrary integer, and capable of being reset to zero or to an
arbitrary integer.”), Laplante, Phillip A., Dictionary of Computer Science, Engineering &
Technology, at 110 (2001) (“a variable or hardware register that contains a value which is always
incremented * * * by a fixed amount, and always in the same direction (usually incremented by
one * * *.”), Digital Design with CPLD Applications VHDL, at 503 (2005) (“A sequential
digital circuit whose output progresses in a predictable repeating patter, advancing by one state

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for each clock pulse.”) (defendants’ emphasis omitted) Defendants’ Response [Dkt. No. 578] at
14.
The defendants further urge that Lodsys’ examples of non-integer counters are
“misleading.” The defendants urge that time may be represented by an integer, and Lodsys’
other examples may be implemented using integers as well. Id. at 15. With respect to Lodsys’
argument that a counter may be decreased, the defendants note that all of the clams require
incrementing the counter, and that there is no discussion in the specification of decrementing a
counter. Id.
The defendants also rely on prosecution history.

The defendants note that during

prosecution the “counter” and “increment a counter” limitations were added to overcome a
rejection, and the examiner subsequently allowed the claims. In the Notice of Allowance,
according to the defendants, the examiner commented that “[N]either McKenna, Moore, nor any
other prior art of record discloses incrementing a counter corresponding to the trigger event upon
detection of the trigger event, and causing the display of a user interface, configured to probe for
information regarding a use of the product, if the counter exceeds a threshold.” Defendants’
Response [Dkt. No. 578] at 15 (defendants’ emphasis omitted). The defendants argue that
“Plaintiffs cannot read the counting aspect out of the term ‘counter’ because doing so directly
conflicts with the Examiner’s reason for allowance over McKenna and Moore.” Id. at 16. The
defendants urge that adopting Lodsys’ proposed construction would allow the claims to be read
on McKenna and Moore prior art. Id. at 16-17.
With respect to “increment a counter,” the defendants similarly argue that “Plaintiffs also
attempt to improperly read the counting aspect out of the ‘increment a counter’ term.” Id. at 17.
The defendants urge that their construction is consistent with the specification and prosecution
history while “Plaintiffs’ construction reads out the true meaning of the word ‘increment’
altogether and is inconsistent with the intrinsic record because it would encompass the features
of Moore and McKenna that were given up during prosecution.” Id.
With respect to “if the counter exceeds a threshold,” the defendants urge that the plain
claim language provides that a counter is incremented until it “exceeds” a numeric value and an
interaction with a user is then performed. According to the defendants, “Plaintiffs attempt to
read out the exceeding aspect of the claims by arguing that the limitation is satisfied whenever a
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predeterm
mined criteri is ‘met.’ But meeting a numeric v
ia
B
value is not t same as exceeding it Id.
the
t.”
at 18.
The defendan further urge that “if the counter exceeds a threshold” r
T
nts
u
f
r
requires a “c
cause
and effec relationsh between exceeding th threshold and an action. The def
ct”
hip
he
d
fendants urge that
e
during re
eexamination the patent owner, in response to prior art, argued “[t]h
n
t
o
herefore, wh a
hile
‘display’ may occur for any rea
r
ason, only a ‘display’ t
that results from (i.e., is related to and
o
fter
ger
e
he
und
aimed
occurs af the trigg counter exceeding th threshold could be fou to anticipate the cla
feature of the ‘565 patent.” Id. at 19, quoti response The defen
o
p
ing
e.
ndants urge that “[t]hus this
s,
claim ele
ement would be satisfied if the user interface is d
d
d
i
displayed on when the counter exc
nly
e
ceeds
the thresh
hold.” Id. (em
mphasis omitted)
Lodsys replie that its pr
L
es
roposed construction is consistent w the ordi
with
inary meanin of
ng
“counter, pointing to Webster New Wo
,”
r’s
orld Diction
nary of Com
mputer Term 133 (5th ed.
ms
h
1994)(“A device, suc as a regist or compu storage location, use to represe the numb of
A
ch
ter
uter
ed
ent
ber
occurrences of an ev
vent.”), Dona D. Spenc Spencer Computer Dictionary for Everyon 61
ald
cer,
r’s
r
y
ne
(3rd ed. 1985)(“A device (e.g., a register or computer storage loc
d
o
r
cation) used to represen the
d
nt
number of occurrenc of an event.”). Lodsys’ Reply [
o
ces
[Dkt. No. 59 at 10. L
91]
Lodsys notes that
s
“Defenda
ants’ quotation of extri
insic eviden omits a virtually id
nce
dentical defi
inition, matc
ching
Plaintiff’s construction,” id, pointing to the IEEE Standard D
Dictionary o Electrical and
of
l
Electroni Terms 214 (4th ed. Nov. 3, 1988 which de
ics
N
8),
efines “coun
nter” – in th context of test,
he
f
measurem and dia
ment
agnostic equ
uipment – as:
:

[Dkt. No. 578-13] at 214. As no above, th defendan cited the s
oted
he
nts
second defin
nition, but no the
ot
first defin
nition.
Replying to the defendants’ exampl of embo
R
t
les
odiments fro the speci
om
ification tha use
at
integer values, Lodsy urges that the defendants’ first tw examples describe on the displ of
v
ys
t
wo
s
nly
lay
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a user interface upon the number of occurrences of an event, but do not describe a counter that is
sequentially increased, and urges overall that those embodiments are “are, at best, merely several
embodiments of the invention and should not be used to limit the scope of the term ‘counter’ to
exclude the term’s meaning as understood at the time.” Lodsys’ Reply [Dkt. No. 591] at 11.
Lodsys argues that even if some embodiments could be implemented using an integer counter,
that does not justify limiting the claims as the defendants propose. Id. at 11-12.
Lodsys denies that its proposed construction reads “counting” out of the claim, noting
that in its proposed construction the counter is updated to “reflect an increase in the number of
occurrences of an event.” Id. at 12. Lodsys further contends that the defendants’ proposed
construction improperly narrows the meaning of “increment” by limiting the term to
“sequentially increas[ing] the numeric value of a counter,” contrary to extrinsic evidence cited by
the defendants in the JCCS. Id.
With respect to the cited prosecution history, Lodsys argues that “Defendants’ assertion
is irrelevant because prosecution history estoppel is not an issue for claim construction,” id. at
13, citing Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1998).
Lodsys further urges that the defendants are simply wrong in asserting that the examiner allowed
the ‘565 patent over McKenna and Moore only because of the “counter” limitation. Lodsys
contends that there was no clear and unambiguous disavowal of scope. Lodsys’ Reply [Dkt. No.
591] at 13-14.
With respect to “if the counter exceeds a threshold,” Lodsys says that it “merely proposes
to construe this phrase consistently with the specification, which describes: ‘actual triggers occur
at specific instances when both the trigger increments the counter, and that counter reaches
specific values.’ ” Id. at 14, citing ‘565 patent, col. 29, lines 52-54.
Lodsys further contends that the defendants mischaracterized the reexamination
prosecution history. According to Lodsys, “[a]s the quoted language from the reexamination
makes clear, however, Plaintiff merely asserted (and the Examiner subsequently agreed) that the
claim element would only be satisfied if the user interface is displayed in response to the counter
exceeding a threshold, regardless of whether the user interface was also displayed for any other
reason.” Lodsys’ Reply [Dkt. No. 591] at 14.

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3. Discussion
D
The Federal Circuit in Phillips made clear that the words o a claim sh
T
C
P
e
of
hould receiv the
ve
ordinary and custom
mary meanin for such words, abs ent (1) claim language that, in con
ng
m
ntext,
o
he
and
ary
g,
suggests or requires something other than th ordinary a customa meaning (2) a disclosure
in the specification that indicates that the pa
s
atentee inten
nded to be hi
is/her own le
exicographe and
er
chose to adopt a diff
ferent meaning, or the sp
pecification otherwise in
ndicates that a meaning other
t
d
y
w
,
ory
milarly
than the ordinary and customary meaning was intended, or (3) prosecution histo that sim
indicates, though am
mendment an
nd/or argume that the patentee int
ent,
ntended a me
eaning other than
r
the ordin
nary and cus
stomary mea
aning. 415 F.3d at 1313 et seq. Be
F
3
ecause, as th Federal C
he
Circuit
explained in Phillip prosecution history can freque
d
ps,
ently be unc
clear, gener
rally relianc on
ce
prosecuti history requires a cl
ion
r
lear and una
ambiguous d
disavowal. 415 F.3d at 1317. See also,
Omega Eng’g, , 334 F.3d at 1324
E
4.
a) “counter”
)
Here, the var
H
rious referen
nces both pa
arties rely on indicate th “counter” has a gene
n
hat
”
erally
accepted meaning as a technical term of art. As noted a
s
above, the d
defendants pr
rincipally re on
ely
the IEEE Standard Dictionary of Electrical and Electro
E
D
o
onics Terms 214 (4th ed Nov. 3, 1
s
d.
1988)
definition of “counter,” but as Lo
n
odsys correct notes, that source has t definitio
two
ons:

The defe
endants poin to the sec
nt
cond definiti
ion, while L
Lodsys poin to the fir definition In
nts
rst
n.
either ev
vent, that definition is in the contex of “test, m
n
xt
measuremen and diagnostic equipm
nt
ment”
which is not the cont
text of the present inven
ntion. Also, though, the defendants have not po
ointed
to anythi in the sp
ing
pecification or prosecutio history th suggests that the patentee intend to
o
on
hat
ded
limit “counter” to tha second definition. Alt
at
though perh
haps, as the d
defendants a
allege, the va
arious
embodim
ments disclos in the specification could be i
sed
s
n
implemented through integers doe not
d
es
equate to evidence th the paten actually intended tha limited me
o
hat
ntee
at
eaning.
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Lodsys also points to We
L
p
ebster’s New World Dic
w
ctionary of C
Computer Te
erms 133 (5t ed.
th
1994)(“A device, suc as a regist or compu storage location, use to represe the numb of
A
ch
ter
uter
ed
ent
ber
occurrences of an event.”), an Donald D. Spencer Spencer’s Computer Dictionary for
nd
r,
r
y
Everyone 61 (3rd ed 1985)(“A device (e.g a register or comput storage l
e
d.
A
g.,
r
ter
location) used to
represent the numbe of occurr
t
er
rences of an event.”). Those are consistent with the fir or
n
rst
primary meaning pro
m
ovided in the IEEE refere
e
ence.
Those source also appe to offer explanation for “coun
T
es
ear
ns
nter” most clearly within the
context of the invent
o
tion of the patents-in-su It is add
p
uit.
ditionally no
oted that thos definition are
se
ns
consisten with the MCGRAW-HILL DICTION
nt
H
NARY

OF

SCI
IENTIFIC

AND
D

TECHNICA TERMS (5th ed.
AL
5

1994) at 472 – whi defines “counter” in the field o computer science as “[a] regist or
ich
n
of
r
s
ter
storage lo
ocation used to represen the number of occurren
d
nt
r
nces of an ev
vent.”
The other sources the defendants rely on d not actu
T
do
ually suppo the prop
ort
posed
construct
tion. Phillip A. Laplant Dictionar of Compu Science, Engineerin & Techno
p
te,
ry
uter
,
ng
ology,
at 110 (2001), provid
des:

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[Dkt. No 578-14] and is, at bes ambiguou (although defendants rely on the first defin
o.
st,
us
h
s
nition,
they do not explain why the seco definition might also not be appl
n
w
ond
o
licable, and instructing a jury
that “cou
unter” includ “a simpl Moore fin state ma
des
le
nite
achine” hard simplifies anything). The
dly
s
other ref
ference that the defendan rely on, Digital Des
nts
sign with CP
PLD Applic
cations VHD at
DL,
503 (200 appears to be a textb
05),
t
book that includes the fol
llowing:

[Dkt. No. 578-15]. The defendan point to “A sequentia digital cir
T
nts
“
al
rcuit whose o
output progr
resses
in a pred
dictable repe
eating pattern advancing by one sta for each clock pulse but ignor the
n,
g
ate
e,”
re
statemen that “[t]he simplest definition of a counter is ‘ circuit tha counts pul
nt
‘a
at
lses.’ ” Also the
o,
title of th book, “Di
he
igital Design with CPLD Applicatio VHDL,” suggests tha it has a na
n
D
ons
at
arrow
scope. Moreover, and perhaps most importan
M
d
m
ntly, the defe
endants simp cite this textbook wi
ply
ithout
any attem to qualif this textb
mpt
fy
book as an authoritative source that a court cou or should rely
a
uld
d
on. Simp because a book has been publis
ply
shed does no make it au
ot
uthoritative or reliable. FED.
R. EVID. 803(18) req
quires that such materia be establ
s
als
lished as “a reliable aut
thority.” In
ndeed,
ntally, the defendants ur that this textbook ref
rge
flects how o of ordina skill in th art
one
ary
he
fundamen
– genera
ally, and mo specifica within the context of the paten
ore
ally
t
nts-in-suit – would con
nstrue
“counter. But, the defendants have done no
.”
d
h
othing more than cite the book, and p
e
provide a co of
opy
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a portion thereof. The defendants offered no evidence on which the Court may rely to adjudge
whether the book is truly authoritative or “a reliable authority” or truly reflects how one of
ordinary skill in the art – generally, and more specifically within the context of the patents-in-suit
– would construe “counter.”
Also, claim 1 of the ‘565 patent again provides:
1. A unit, comprising: a memory; a transmitter; and a processor, coupled to the
memory and to the transmitter, configured to: monitor a product for an occurrence
in the product of a trigger event of a predefined plurality of trigger events,
increment a counter corresponding to the trigger event upon detection of the
occurrence of the trigger event, cause the display of a user interface, configured to
probe for information regarding a use of the product, if the counter exceeds a
threshold, cause the memory to store an input received from the user interface, and
cause the transmitter to transmit the input to a server.
The defendants have pointed to nothing in the claim language that supports their narrow
construction of “counter” or “increment a counter,” and the Court finds none.
Additionally, as noted above, the MCGRAW-HILL DICTIONARY

OF

SCIENTIFIC

AND

th

TECHNICAL TERMS (5 ed. 1994) at 472, a source that has been repeatedly relied on by the
Federal Circuit and other courts as an authoritative source, defines “counter” in the field of
computer science, a field certainly related to the patents-in-suit, as “[a] register or storage
location used to represent the number of occurrences of an event.” That is consistent with the
language of the claim.
Lodsys’ proposed construction of “counter” is “a memory location for storing values that
represent the number of occurrences of an event.” The Court concludes that Lodsys’ proposed
construction is consistent with the ordinary and customary meaning of “counter,” as reflected in
the MCGRAW-HILL DICTIONARY

OF

SCIENTIFIC

AND

TECHNICAL TERMS, the other sources

discussed above, and is furthermore consistent with how “counter” is used in the claims,
specification and prosecution history. More specifically, the Court concludes that the defendants
have not identified any portion of the specification that suggests that the patentee intended any
different meaning for “counter.” Furthermore, the Court concludes that the portions of the
prosecution history that the defendants rely on are not inconsistent with that ordinary and
customary meaning of “counter,” and, in all events, the prosecution history does not express a
clear and unambiguous disavowal of that ordinary and customary meaning.
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In that regard, the Court does not agree with Lodsys’ contention that “Defendants’
assertion is irrelevant because prosecution history estoppel is not an issue for claim
construction,” citing Spectrum, 164 F.3d 1372, 1378-79. In Spectrum, the Federal Circuit, in a
footnote, commented: “Our recourse to language emphasizing the relinquishing of subject
matter during prosecution should not be construed to undermine the ‘clear distinction between
following the statements in the prosecution history in defining a claim term, and the doctrine of
prosecution history estoppel, which limits expansion of the protection under the doctrine of
equivalents when a claim has been distinguished over relevant prior art.’ ”
Prior to more recent cases such as Omega Eng’g, 334 F.3d at 1324, the phrase
“prosecution history estoppel” was frequently used by the courts to refer to two distinct types of
estoppel: (1) estoppel arising from amendments and arguments made during prosecution that
may limit the meaning of claim terms and the scope of the claims, and (2) estoppel also arising
from amendments and arguments made during prosecution that foreclose, or limit, a patentee’s
ability to rely on the doctrine of equivalents in asserting infringement in the absence of literal
infringement. The Federal Circuit in Omega Eng’g, and other cases, began using “prosecution
history disclaimer” to refer to the first type of estoppel to distinguish the two. In all events,
contrary to Lodsys’ argument, amendments and arguments made during prosecution – either
original prosecution or during a reexamination – may impact on the construction of claims.
Here, the defendants note that during examination, the examiner commented that
“[N]either McKenna, Moore, nor any other prior art of record discloses incrementing a counter
corresponding to the trigger event upon detection of the trigger event, and causing the display of
a user interface, configured to probe for information regarding a use of the product, if the counter
exceeds a threshold.”

Defendants’ Response [Dkt. No. 578] at 15 (defendants’ emphasis

omitted). Adopting the construction “a memory location for storing values that represent the
number of occurrences of an event” neither reads “counting” out of the limitation nor conflicts
with the examiner’s reason for allowance over McKenna and Moore.
b) “increment a counter”
As for “increment a counter,” the defendants simply have not provided any persuasive
evidence that one of ordinary skill in the art would construe that phrase narrowly as “to
sequentially increase the numeric value of a counter.”
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th
The MCGRAW-HILL DICT
T
W
TIONARY OF SCIENTIFIC A
AND TECHNI
ICAL TERMS (5 ed. 199 at
S
94)

1001, defines “increm
ment” in the field of sci
e
ientific techn
nology, as si
imply “a sm change i the
mall
in
value of a variable.” Given the foregoing construction of “counter as “a mem
”
c
r”
mory locatio for
on
storing values that represent the number of occurre
v
t
ences of an event,” L
n
Lodsys’ prop
posed
construct
tion of “increment a cou
unter” as “up
pdate a count to reflect an increase in the numb of
ter
t
ber
occurrences of an event” is co
e
onsistent with the clai language the speci
im
e,
ification and the
d
ion
ants’ argume
ents, the defe
fendants’ hav not shown that
ve
n
prosecuti history. Contrary to the defenda
adopting Lodsys’ pro
oposed construction wou encompa the featu of Moor and McK
uld
ass
ures
re
Kenna,
the prior art applied during pro
r
d
osecution. Moreover, e
M
even if so, t
that is an is
ssue that is more
properly addressed in the contex of whethe the asserte claims ar valid unde the height
n
xt
er
ed
re
er
tened
standard of “clear an convincin evidence applicable in light of the presum
nd
ng
e”
e
f
mption of va
alidity
under § 282.
2
c) “if the co
)
ounter excee a thresh
eds
hold”
Lodsys propo “if the counter’s val meets a p
L
oses
c
lue
predefined c
criteria” whi the defen
ile
ndants
(and Ka
aspersky) pro
opose “only when the counter ex
y
xceeds a p
predetermine value.”
ed

The

defendan generally contend th Lodsys’ proposed c
nts
y
hat
construction reads “exceeds” out o the
of
claim. The Court agr
T
rees.
Lodsys says that its pro
L
oposed cons
struction “m
merely propo
oses to cons
strue this p
phrase
consisten with the specificatio which describes: ‘ac
ntly
e
on,
d
ctual trigger occur at s
rs
specific insta
ances
when bot the trigge increment the counte and that counter reac
th
er
ts
er,
ches specific values.’ ” I at
c
Id.
14, citing ‘078 paten col. 29, lines 52-54 (a
g
nt,
although the phrase appe in the a
e
ears
asserted claim of
ms
the ‘565 patent, Lods cites to th specificat
sys
he
tion of the ‘0 patent), which discloses, in cont
078
text:

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Although the specification refers to “[t]he actual triggers occur at specific instances when
both the trigger increments the counter, and that counter reaches specific values,” the patentee
chose to claim “if the counter exceeds a threshold.” As noted above, during claim construction,
the courts do not have the province to re-write the claims in a form that the patentee, on
reflection, preferred. See K-2 Corp., 191 F.3d at 1364 (“Courts do not rewrite claims; instead,
we give effect to the terms chosen by the patentee.”); SRAM Corp., 465 F.3d at 1359, Hoganas
AB, 9 F.3d at 951, Tex. Instruments, Inc., 988 F.2d at 1171. Rather, if the patentee believes that a
claim was wrongly drafted, a patentee must resort to the other statutory procedures for correcting
a claim – i.e., reissue or reexamination, to the extent permitted.
In all events, a patentee cannot, through a proposed claim construction, seek to “read out”
express claim limitations. Here, the asserted claims clearly call for “if the counter exceeds a
threshold.” Accordingly, Lodsys’ proposed broader proposed construction of “if the counter’s
value meets a predefined criteria” is declined.
The Court’s conclusion that the asserted claims calling for “if the counter exceeds a
threshold” will be construed as written appears to resolve the parties’ dispute. Accordingly, no
further construction is deemed necessary.
M. “forwarding the input” / “a priority code associated with the input”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term

Claims

Defendants

Lodsys

Kaspersky

“forwarding
the input”

’565:
16

No construction
necessary

“transmitting the input
from the server to a
destination other than
the product”

Not proposed for
construction because
claim 16 is not asserted
against Kaspersky.

“a priority
code
associated
with the
input”

’565:
16

No construction
necessary

“information received
from the product that
indicates the priority of
the input”

Not proposed for
construction because
claim 16 is not asserted
against Kaspersky.

If the Court determines
this term should be
construed:
“a property indicative
of the input”

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JCCC [Dkt. No. 615] at 8

2. Claim Language in Context
Claim 16 of the ‘565 patent calls for, with parent claim 15:
15. A method, comprising:
monitoring a product for an occurrence in the product of a trigger event of a
predefined plurality of trigger events;
incrementing a counter corresponding to the trigger event upon detection of the
occurrence of the trigger event in the product;
displaying a user interface, configured to probe for information regarding a use of
the product, if the counter exceeds a threshold;
storing an input received from the user interface on a device; and transmitting the
input to a server.
16. The method of claim 15, further comprising: forwarding the input based on a
priority code associated with the input.
3. Discussion
a) “forwarding the input”
It is not clear that there is a continuing dispute. The defendants contend that “[t]he
parties’ dispute over the meaning of ‘forwarding the input’ focuses on one discrete issue:
whether ‘forwarding the input’ can be broadened to read on the server sending the input back to
the product from which the input originated, as proposed by Plaintiffs. Simply put, the plain
meaning of ‘forwarding’ as discussed in the specification does not encompass replying as
Plaintiffs contend. Defendants’ Response [Dkt. No. 578] at 37.
Lodsys in reply agrees: “Defendants incorrectly contend that Plaintiff’s position is that
‘forwarding’ can mean sending the input, which originated at the product, back to the product.
The plain meaning of ‘forward,’ which will be apparent to the jury without construction, means
transmitting the input to another location other than the original source of the input. To the extent
that Defendants’ construction captures that concept, the plain meaning of the term ‘forwarding’
is sufficient. Indeed, Defendants admit that the word is easily understood to anyone familiar with
email.” Lodsys’ Reply [Dkt. No. 591] at 21.

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The parties thus agree that “forward” is distinct from “reply,” and means transmitting the
input to another location other than the original source of the input. The Court concludes that no
further construction is necessary.
b) “a priority code associated with the input”
Lodsys says that “[c]ontrary to Defendants’ assertion that the product must supply the
priority code, the specification shows the priority code is used to determine whether or how to
forward the input, a determination that may be made by an analysis system, and not necessarily
by the product: * * *.” Lodsys’ Brief [Dkt. No. 555] at 33. Lodsys urges that while it is possible
for the product to assign a priority to the input, the specification contains a broader disclosure.
Lodsys says that this portion of the specification, ‘078 patent, column 54, lines 52-64, discloses
that the priority code does not need to relate to the priority of a single input, but rather may be
forwarded based on a metric that is related to the input regardless of the priority of the individual
input. Lodsys’ Brief [Dkt. No. 555] at 34.
The defendants, on the other hand, urge that the dispute is whether Lodsys improperly
reads “the term as broadly encompassing functionality performed by the analysis server which
has nothing to do with forwarding the input as claimed.” Defendants’ Response [Dkt. No. 578] at
38. Defendants say that “[i]n fact, the patent discloses ‘a priority code’ in the context of an
‘urgent’ or ‘special’ transmission code that can be sent, from the product to the server, along
with the user’s input.” Id. Defendants urge that Lodsys’ “interpretation of the term is wholly
unsupportable; nowhere does the specification indicate that the analysis system forwards the
input. At most, the analysis system may send an alert ‘based on a metric that is related to the
input.’ * * * But that is not ‘forwarding the input based on a priority code associated with the
input,’ and, thus, is not relevant to the issue.” Id.
Lodsys in reply says that “Defendants contend this term cannot include a priority code set
by the analysis system because the only embodiments illustrating ‘forwarding the input’ involve
priority codes set by the product. * * * However, even where a patentee has described, in every
embodiment, only one kind of structure for the term, that fact does not compel limiting the term
to only that structure.” Lodsys’ Reply [Dkt. No. 591] at 22. Lodsys also continues to maintain
that the analysis system can assign a priority code to an input, and can forward an input, in the

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form of a report, “to the person who is to be notified o the report Id. Lod
o
b
of
t.”
dsys points t the
to
‘078 pate column 54, lines 52ent,
-67.
The portion of the specifi
T
o
ication that Lodsys poin to (althou the dispu terms ap
L
nts
ugh
uted
ppear
in the ‘56 patent, Lo
65
odsys’ refere
ence is actua to the sp
ally
pecification o the ‘078 p
of
patent) expla
ains:

The Cour like the defendants, has some dif
rt,
d
h
fficulty in as
ssessing the r
relevance of the foregoi to
f
ing
claim 16 calling for “forwarding the input based on a p
6
g
b
priority code associated with the in
e
d
nput.”
However the Court finds it un
r,
nnecessary to resolve w
o
whether the “
“analysis se
erver” can a
assign
priority codes.
c
The defendan have prop
T
nts
posed “infor
rmation rece
eived from t product that indicate the
the
es
priority of the inpu
ut.”

Howev
ver, the clai language is not lim
im
e
mited to “re
eceived from the
m

product.” Even if the disclosed embodiment use inform
”
e
ts
mation receiv from a p
ved
product, that does
t
not neces
ssarily mean the claims are so limit
n
ted. See Phi
illips, 415 F
F.3d at 1323 (“[A]lthoug the
gh
specifica
ation often describes very specific embodiment of the inv
d
ts
vention, we have repea
e
atedly
warned against confi
a
ining the clai to those embodimen * * * In p
ims
nts.
particular, w have expr
we
ressly
rejected the contenti that if a patent desc
ion
cribes only a single em
mbodiment, t claims o the
the
of
patent must be cons
m
strued as bei limited to that emb
ing
bodiment. * * * That is not just bec
cause
section 112 of the Pa
atent Act req
quires that th claims the
he
emselves set forth the lim of the p
t
mits
patent
ut
use
o
art
ould confine their defini
e
itions
grant, bu also becau persons of ordinary skill in the a rarely wo
of terms to the exact representations depicted in the embo
d
odiments.”).
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Accordingly, the Court concludes that “a priority code associated with the input” should
be construed as “information that indicates the priority of the input.”
N. “passive probe” / “server” / “communication element” / “memory”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Defendants

Kaspersky

No construction
necessary

No further construction
necessary

“a device or a program
that gathers
information about a
unit of a commodity
without requesting user
input”

‘078:
7, 62
‘565:
1, 15,
18, 27,
29

No construction
necessary

No construction
necessary

“a computer that is
distinct from the unit
of a commodity (‘078
patent).

“communication
element”

‘078:
1, 5,
51, 60

No construction
necessary

No construction
necessary

“a hardware device
that allows
transmission of data”

“memory”

‘078: 1
‘565:
1, 6

No construction
necessary

No construction
necessary

“physical device used
to store programs or
data on a temporary or
permanent basis for
use in a computer or
other digital electronic
device”

Disputed Terms

Claims

Lodsys

“passive probe”

‘078: 5

“server”

A computer that is
distinct from the unit
or product or
computing device
(‘565 patent). “

JCCC [Dkt. No. 615] at 8-9

2. Discussion
Kaspersky urges that “software by itself does not include ‘memory,’ a ‘user interface’
that provides a ‘medium’ for ‘two-way local interaction,’ or a ‘communications element’ that can
carry information from users to a ‘central location,’ along with information from ‘passive
probes’ as recited in dependent claim 5.” Kaspersky’s Corrected Response [Dkt. No. 590] at 6.
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Kaspersky does not otherwise explain why “passive probe” requires construction. Kaspersky
similarly does not address why “server,” “communication element,” and “memory” require
construction, or otherwise explain the proposed construction. Id. at 5-7.
The Court concludes, along with Lodsys and the defendants, that these terms do not
require construction.
O. “interaction scripts” / “carrying information about the value to users of using the
product”
1. The Parties’ Proposed Constructions
The parties’ contend as follows:
Disputed
Terms

Claims

Lodsys

Defendants

Kaspersky

“interaction
scripts”

‘908:
37

“instructions for the
display of interactive
content”

This term is indefinite
under 35 U.S.C.
§ 112(2)

No assertion because the
‘908 patent is not
asserted against
Kaspersky.

“carrying
information
about the value
to users of
using the
product”

‘908:
37

No construction
necessary

“containing users’
subjective opinions
about the value of using
the product”

Not proposed for
construction because the
‘908 patent is not
asserted against
Kaspersky.

JCCC [Dkt. No. 615] at 9

2. Discussion
a) “interaction scripts”
The phrase “interaction scripts” does not appear in the specification – only in the claims
of the ‘908 patent. Claim 37 of the ‘908 patent calls for:
37. A system for managing information about a value to users of units of a
computer product that are in use by the users, the system comprising
in each of the units of the computer product, a user interface which provides a
medium for two-way local interaction between the user and the unit of the product,
interaction scripts that mediate two-way interaction between each of the users and
the corresponding unit of the product via the user interface, each of the interaction
scripts carrying information about the value to users of using the product,
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a value information server accessible via a public communication network from
each of the units of the computer product and by a vendor of the computer product,
the value information server storing interaction scripts and the value information
that results from the interaction scripts, and
a communication element that carries the interaction scripts and the information
that results from the interaction scripts between the units of the products and the
value information server, and between the value information server and the vendor.
(emphasis added)
Lodsys urges that it is clear from claims 1, 36 and 37 of the ‘908 patent that “interaction
scripts” are instructions for the display of interactive content. Lodsys’ Brief [Dkt. No. 555] at 25.
Lodsys says that function of the “interaction scripts” is described in the specification vis-à-vis
Customer Design Instruments” (CDIs). Id.
The defendants urge that the intrinsic evidence is ambiguous whether the “interaction
scripts” are instructions for the display of interactive content or the actual interactive content
itself. Defendants’ Response [Dkt. No. 578] at 25. The defendants urge that the intrinsic
evidence that Lodsys relies on could apply to either. Id. at 25-26. As a result, the defendants
argue, the asserted claim is indefinite under § 112(2), and invalid.
Lodsys replies that simply because a term may be susceptible to more than one meaning
does not necessarily render the claim indefinite. Lodsys’ Reply [Dkt. No. 591] at 15, citing
Process Control v. HydReclaim, 190 F.3d 1350, 1356 (Fed. Cir. 1999).
As discussed above, the question of indefiniteness focuses on whether the claim is
“insolubly ambiguous.” Here, the asserted claim is claim 37 of the ‘908 patent, and thus the
question is whether “interaction scripts” is “insolubly ambiguous within the context of that
claim. It is not.
In the context of claim 37, the Court concludes that “interaction scripts” refers to
“interactive content.”

Claim 37 first calls for “interaction scripts that mediate two-way

interaction between each of the users and the corresponding unit of the product via the user
interface.”

That language is more consistent with “content” than with “instructions” for

displaying content.

The claim further provides “each of the interaction scripts carrying

information about the value to users of using the product.” Again, “information about the value
to users of using the product” is more consistent with “content” than with “instructions” for
displaying content.
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Claim 37 next calls for “a value information server” for “storing [1] interaction scripts
and [2] the value information that results from the interaction scripts.” That likewise suggests
that “interaction scripts” refers to “interaction content” – and “the value information that results
from the interaction scripts” refers to a customer’s responses.
Claim 37 lastly calls for “a communication element that carries [1] the interaction scripts
and [2] the information that results from the interaction scripts * * *.” Once again, “interaction
scripts” in that context is more consistent with “interaction content” than with “instructions” for
displaying content.
Construing “interaction scripts” as “interaction content” is also consistent with the
specification. As noted above, Lodsys urges that the function of the “interaction scripts” is
described in the specification vis-à-vis Customer Design Instruments” (CDIs). The defendants,
on the other hand, contend that “Plaintiffs cannot seem to decide whether ‘interaction scripts’ are
analogous to the ‘Development Interactions (DI)’ or the ‘Customer Design Instruments (CDI)’
described in the specification of the patent.” Defendants’ Response [Dkt. No. 578] at 25.
However, the defendants agree that “Development Interactions are the actual interactions
between the user and the product, not instructions for the display of interactive content.” Id. The
defendants moreover criticize Lodsys’ proposed construction urging that “the applicant does not
refer to CDIs as a set of instructions anywhere in the specification.” Id. at 26. The defendants
contend that “[i]n fact, the specification expressly defines CDI as ‘a specific set of Customer
Probes (CP),’ and ‘Customer Probes (CP)’ are in turn defined as ‘the prompts, questions, etc.
stored in a CB-PD module for interacting with a customer.’ ”Id. The defendants thus agree that
CDI refers to “content” rather than “instructions” for displaying content.
Lastly, the defendants note that during prosecution the applicant replaced the term “twoway dialog” with “interaction scripts” in response to a rejection by the PTO. Id. The examiner’s
rejection was in an office action dated September 15, 1998, and provided:
Claims 2-5, 7, 8, 14, 16-22, 48, and 52 are also rejected under 35 U.S.C. 112, first
paragraph because the specification fails to provide written description or
enablement of the element “two-way dialog”. The specification fails to define the
term “two-way dialog”, although it does disclose “customer probes” comprising
sets of stored prompts and questions. It should be noted that the responses of users
cannot constitute part of the “two-way dialogs” because the actions of the users are
not structural elements of the system. Thus, it is unclear what structural element
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“two-way dialog” is intended to define. For the purpose of applying art in this
action, it will be assumed that the applicant intended to refer to (i) a set of
prescripted computer prompts and questions (as in a user feedback system) or (ii) a
set of prescripted computer responses (as in a help system).
[Dkt. No. 578-23] at 10. Although the defendants say that “the examiner defined ‘two-way
dialog’ as a set of either prescripted computer prompts or prescripted computer responses,”
Defendants’ Response [Dkt. No. 578] at 26, in actuality the examiner referred to “(i) a set of
prescripted computer prompts and questions (as in a user feedback system) or (ii) a set of
prescripted computer responses (as in a help system),” namely “content” – as opposed to
“instructions” for displaying content as in using a computer scripting language.
The applicant filed a response dated March 15, 1999, that, inter alia, changed “two-way
dialog” to “interaction scripts.” The applicant commented that “[c]laims 48 and 52 have been.
amended to refer to ‘interaction scripts’. However, applicant disagrees that ‘interaction scripts’ is
limited to the two examples given by the examiner.”

File History for the ‘908 patent,

USP5999908_SFH.pdf (provided on CD after the close of the Markman hearing), Response
dated March 15, 1999, at 18. Although the applicant referred to application claims 48 and 52,
other application claims were similarly amended, including application claim 53, which became
patent claim 37.
The defendants urge that “the prosecution history creates further ambiguity as to the
meaning and scope of the term ‘interaction scripts.’ ” Defendants’ Response [Dkt. No. 578] at
26. The Federal Circuit in Phillips commented that the prosecution history is sometimes an
unreliable basis for resting claim construction because of the interaction between the PTO and
the applicant. Phillips, 415 F.3d at 1317. Here, the prosecution history reveals only the factual
matters discussed above. The prosecution history does not necessarily resolve the “content” vs.
“instructions” for the display of content issue, but likewise does not render claim 37 of the ‘908
patent “insolubly ambiguous.”
As noted at the outset, the Court concludes that “interaction scripts” in the context of
claim 37 refers to “interactive content.” The Court further concludes that, as a result, claim 37 is
not “insolubly ambiguous,” is not indefinite under § 112(2), and is not invalid under § 112(2).
Finally, in response to Lodsys’ argument that simply because a term may be susceptible
to more than one meaning does not necessarily render the claim indefinite, based on Process
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Control v. HydReclaim, 190 F.3d 1350, 1356 (Fed. Cir. 1999). The Federal Circuit in Process
Control commented that “[i]t is true, as HydReclaim urges, that we should attempt to construe
the claims to preserve their validity, * * *. However, contrary to HydReclaim's assertions, this is
not a case where the claim language is reasonably susceptible to two constructions. Rather, the
claim as written by the patentee is susceptible to only one meaning.” Id. The rationale of
Process Control does not apply here. This is not a case in which the Court must decide between
one construction that preserves validity and another equally applicable construction that does
not.
The Court concludes that “interaction scripts” refers to “interactive content,” the claim is
not insolubly ambiguous, and therefore is not invalid as indefinite under § 112(2).
b) “carrying information about the value to users of using the product”
The defendants say that “[a]lthough Plaintiffs do not offer a proposed construction for
this term, they appear to implicitly construe ‘carrying’ as ‘transmitting’ or ‘communicating.’ ”
Defendants’ Response [Dkt. No. 578] at 26.

The defendants urge that Lodsys’ proposed

construction for “interaction scripts” “makes clear that ‘carrying’ means containing, and not
transmitting or communicating. Plaintiffs claim that the term ‘interaction scripts’ means
‘instructions for the display of interactive content,’ and equate the ‘Customer Design Instruments
(‘CDIs’) with ‘interaction scripts.’ * * * The specification defines a CDI as ‘a specific set of
Customer Probes (CP) that are intended to elicit the raw data.’ * * * It also defines ‘Customer
Probes’ as ‘prompts, questions, etc stored in a CB-PD Module for interacting with a Customer.’
* * * An ordinary skilled artisan would understand that ‘instructions’ or a specific set of
‘prompts, questions, etc.’ cannot transmit or communicate information. As such, Plaintiffs’
construction for the term ‘interaction scripts’ support Defendants’ view that ‘carrying’ means
‘containing.’ ” Id.
“In addition,” the defendants argue, “the specification supports Defendants’ view that
‘information about the value to users of using the product’ corresponds to a user’s subjective
opinion about the value of using the product per the Defendants’ proposed construction. * * *
Although Plaintiffs argue that the specification describes ‘a large variety of valuable feedback
* * * not all of which are subjective opinions,’ Plaintiffs do not, and cannot, point to any

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information about ‘the value to users of the product’ that are not subjective opinions, because the
value the user attaches to the product is inherently subjective.” Id.
Lodsys replies that “Defendants fail to demonstrate that ‘carrying’ has been used in a way
that requires construction in order to be understood by the jury.” Lodsys’ Reply [Dkt. No. 591]
at 15. Lodsys further replies that “[a]s discussed above regarding the ‘user’s perception of the
commodity,’ the specification identifies types of information that Defendants’ contend are not
‘subjective.’ ” Id. at 15-16.
As noted above, the Court has not adopted Lodsys’ proposed construction for “interaction
scripts.” The subject claim limitation clearly calls for “carrying information about the value to
users of using the product.” The defendants have provided no persuasive reason why the Court
should re-write the claim to substitute “containing” for “carrying.” Nor have the defendants
identified why that is necessary to resolve any issue in this case.
As for “subjective opinions,” the claim language refers to “language about the value to
users of using the product.” That language appears to be clear and readily understandable. That
language may include “subjective opinions,” but is not necessarily limited to the same.
Here, as in other instances, the parties have not advised the Court on how a proposed
construction may truly impact any actual infringement and/or validity issue being asserted in this
case. The parties furthermore debate whether various types of information disclosed in the
specification are “subjective opinion” or not.
The Court, at this juncture, therefore, must conclude that the actual claim language,
“information about the value to users of using the product,” is not necessarily limited to a user’s
“subjective opinion,” and defendants have not provided a persuasive showing that the
specification necessitates so construing that claim language.
Accordingly, the Court concludes that, in light of the foregoing comments, no further
construction is necessary.

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P. “a transaction for sale of a product or a service contract for the commodity”
1. Parties’ Proposed Constructions
The parties’ proposed the following constructions:
Disputed
Term
“a transaction
for sale of a
product or a
service
contract for
the
commodity”

Claims
‘078:
24

Lodsys

Defendants

“a transaction for sale
of a product for the
commodity or a service
contract for the
commodity”

No construction
necessary

Kaspersky
The transaction for sale
of a product need not
be “for the
commodity.”

JCCC [Dkt. No. 615] at 9

2. Claim Language in Context
The disputed claim language appears in claim 24, which is dependent on claim 1 of the
‘078 patent. Those claims provide:
1. A system comprising:
units of a commodity that can be used by respective users in different locations,
a user interface, which is part of each of the units of the commodity, configured to
provide a medium for two-way local interaction between one of the users and the
corresponding unit of the commodity, and further configured to elicit, from a user,
information about the user’s perception of the commodity,
a memory within each of the units of the commodity capable of storing results of
the two-way local interaction, the results including elicited information about user
perception of the commodity,
a communication element associated with each of the units of the commodity
capable of carrying results of the two-way local interaction from each of the units
of the commodity to a central location, and
a component capable of managing the interactions of the users in different locations
and collecting the results of the interactions at the central location.
24. The system of claim 1 wherein the two-way local interactions comprise a
transaction for sale of a product or a service contract for the commodity.

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3. Discussion
Lodsys says that “Plaintiff has proposed this claim phrase for construction merely to
clarify a grammatical ambiguity. Specifically, Plaintiff’s construction clarifies that the
prepositional phrase ‘for the commodity’ attaches to both ‘product’ and ‘service contract.’ ”
Lodsys’ Brief [Dkt. No. 555] at 34. Lodsys urges that “[t]he specification repeatedly refers to
products for the commodity, such as upgrades for a product or disposable items used with the
product: * * *.” Id. at 34-35. Lodsys contends that “[s]imilarly, Figure 19 demonstrates the
claimed product would allow users to communicate with ‘vendors of related products.’ Thus, the
specification provides that the additional products that may be purchased through the two-local
interaction are ‘products for the commodity.’ ” Id. at 35.
The defendants respond that “Defendants see no grammatical ambiguity and therefore
fail to see the need to construe the term.” Defendants’ Response [Dkt. No. 578] at 39. Lodsys
did not address the phrase in its reply.
Kaspersky originally did not propose a construction. JCCS [Dkt. No. 505] at 37-38. In
the Rule 4-5(d) JCCC, Kaspersky proposed “[t]he transaction for sale of a product need not be
‘for the commodity,’ ” but that submission was after the close of briefing, and Kaspersky has not
provided any rationale to support that proposed construction.
The Court concludes that no construction is necessary. Lodsys says that its proposed
“construction clarifies that the prepositional phrase ‘for the commodity’ attaches to both
‘product’ and ‘service contract.’ ” The defendants have advised that they “see no grammatical
ambiguity and therefore fail to see the need to construe the term.” The Court thus understands
that the defendants do not disagree with Lodsys’ proposed construction, and therefore there is no
dispute left to decide. Defendants, of course, are consequently precluded from arguing any
construction contrary to Lodsys’ construction to the jury.
Kaspersky’s proposed construction is both belated under the Court’s Local Patent Rules,
and is unsupported. Kaspersky has not requested leave of the Court to submit a belated proposed
construction.

Accordingly, the Court concludes that Kaspersky has waived its proposed

construction.

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V.
Conclusion
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
.
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 14th day of June, 2013.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

97