Ixi Mobile (R&D) Ltd. et al v. Apple, Inc.

Northern District of California, cand-4:2015-cv-03755

BRIEF Plaintiffs Opening Claim Construction Brief. Document filed by IXI IP,LLC, IXI Mobile (R&D) Ltd.

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8 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK IXI MOBILE (R&D) LTD., et al.,: 14-cv-4355 RJS Plaintiffs,: ECF CASE v.:: SAMSUNG ELECTRONICS CO., et al.,: Defendants.:: IXI MOBILE (R&D) LTD., et al.,: 14-cv-4428 RJS Plaintiffs,: ECF CASE v.:: BLACKBERRY LTD, et al.,: Defendants.::: 14-cv-7954 RJS IXI MOBILE (R&D) LTD., et al.,: ECF CASE Plaintiffs,: v.:: APPLE INC.: Defendant.:: PLAINTIFFS' OPENING CLAIM CONSTRUCTION BRIEF Thomas S. Biemer, Esquire Dated: July 8, 2015 Joshua D. Wolson, Esquire John J. Higson, Esquire Mark W. Halderman, Esquire Gary D. Colby, Esquire DILWORTH PAXSON LLP 1500 Market Street, Suite 3500E Philadelphia, PA 19102 Gregory A. Blue, Esquire DILWORTH PAXSON LLP 99 Park Avenue, Suite 320 New York, NY 10016 Attorneys for Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, LLC 8 TABLE OF CONTENTS PAGE TABLE OF AUTHORITIES ......................................................................................................... iii I. INTRODUCTION ................................................................................................................... 1 II. OVERVIEW OF THE PATENTS-IN-SUIT ........................................................................... 1 A. The Inventions Described and Claimed in the '033 Patent.................................................. 1 B. The Inventions Described and Claimed in the '532 Patent.................................................. 2 C. The Inventions Described and Claimed in the '648 Patent.................................................. 3 III. ARGUMENT ....................................................................................................................... 3 A. Standards Of Claim Construction ........................................................................................ 3 B. THE CLAIM TERMS AT ISSUE ....................................................................................... 6 1. The '033 Patent ................................................................................................................ 6 a. The "Service Repository" Terms ................................................................................ 6 1. No construction is necessary and "service repository software component" has its ordinary and customary meaning; in the alternative, the term should be construed as "service discovery software component."........................................................................ 7 2. Defendants' proposed construction of "service repository software component" improperly adds unsupported, unnecessary, and confusing limitations. ....................... 10 3. The "service repository software component" terms are not governed by 35 U.S.C. § 112 (f)............................................................................................................................. 13 4. Even if the "service repository software component" terms are governed by 35 U.S.C. § 112 (f), the terms are definite......................................................................................... 16 b. "thin terminal" ........................................................................................................... 20 c. "the first wireless device. receives the first short-range radio signal" / "selectively transfer information. . . between the first wireless device and the cellular network" ................................................................................................................................... 21 5. The '532 Patent .............................................................................................................. 23 a. "network service software component that provides one or more network services to the wireless local area network" ................................................................................ 23 b. "interface software component" ................................................................................ 26 c. "loaded. . . from the one or more devices connected to the. . . cellular networks" . 27 d. "service level enforcement software component" ..................................................... 28 6. The '648 Patent .............................................................................................................. 29 i 8 a. "device" / "cellular device" ....................................................................................... 29 IV. CONCLUSION .................................................................................................................. 30 ii 8 TABLE OF AUTHORITIES PAGE CASES Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212 (N.D. Cal. 2001) ................................................................................... 14 AllVoice Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236 (Fed. Cir. 2007) .......................................................................................... 16, 19 Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) ................................................................................................. 14 Apple Inc. v. Samsung Elecs. Co., Ltd., No 12-cv-00630, 2013 WL 1502181 (N.D. Cal. April 10, 2013) ....................................... 23, 29 Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004) ................................................................................................ 17 Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946 (Fed. Cir. 2007) .................................................................................................. 16 British Telecomms. PLC v. Prodigy Commc'ns Corp., 189 F. Supp. 2d 101 (S.D.N.Y. 2002) ................................................................................ 28, 29 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) .................................................................................................. 5 Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294 (Fed. Cir. 2003) ............................................................................................ 7, 29 DealerTrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) ................................................................................................ 10 E.I. Du Pont De Nemours & Co. v. Phillips Petroleum, 849 F.2d 1430 (Fed. Cir. 1988) .................................................................................................. 4 Envirotech Corp. v. Al George, Inc., 730 F.2d 753 (Fed. Cir. 1984) .................................................................................................... 4 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990) .......................................................................................... 26, 27 Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369 (Fed. Cir. 1999) .................................................................................................. 7 Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) ................................................................................................ 5 Honeywell Int'l, Inc. v. Acer Am. Corp., No. 07-cv-125, 2009 WL 68896 (E.D. Tex. Jan. 7, 2009) ..................................... 11, 12, 22, 30 iii 8 Intel Corp. v. VIA Techs, Inc., 319 F.3d 1357 (Fed. Cir. 2003) ................................................................................................ 17 Jackrel v. Paragon Sporting Goods, 171 F. Supp. 2d 163 (S.D.N.Y. 2001) .................................................................... 11, 22, 27, 30 Johnson Worldwide Assocs. Inc. v. Zebco Corp., 175 F.3d 985 (Fed. Cir. 1999) .................................................................................................... 4 Kickstarter, Inc. v. Fan Funded, LLC, No. 11-cv-6909, 2013 WL 214313 (S.D.N.Y. Jan. 18, 2013).................................................... 8 Kwik Prods., Inc. v. Nat'l Express, Inc., 356 F. Supp. 2d 303 (S.D.N.Y. 2005) ........................................................................................ 4 Lasermax, Inc. v. Glatter, No. 01-cv-6500, 2005 WL 1981571 (S.D.N.Y. Aug. 17, 2005) ........................................ 12, 30 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) ............................................................................................ 12, 30 Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004) ................................................................................................ 15 Markman v.Westview Instruments, Inc., 517 U.S. 370, 384 (1996) ............................................................................................ 3, 4, 10, 24 Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) ................................................................................................ 15 Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003) ................................................................................................ 16 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) ....................................................................................................... 21, 22 Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644 (Fed. Cir. 1994) ...................................................................................................... 4 Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012) ............................................................................... 16, 17, 18, 20 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) ................................................................................. 23, 29 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 3 Program Rewards Sols. LLC v. Points Int'l Ltd., No. 10-cv-1561, 2012 WL 335660 (S.D.N.Y. Jan. 13, 2012) ................................... 3, 4, 10, 24 Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) .................................................................................................. 4 iv 8 SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278 (Fed. Cir. 2005) .................................................................................................. 5 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001) .................................................................................................. 5 Software Tree, LLC v. Redhat, Inc., No. 09-cv-097, 2010 WL 2232809 (E.D. Tex. June 1, 2010) .................................................... 8 Stanacard, LLC v. Rebtel Networks, AB, 680 F. Supp. 2d 483 (S.D.N.Y. 2010) ...................................................................... 8, 12, 24, 25 STMicroelectronics, Inc. v. Motorola, Inc., 327 F. Supp. 2d 687 (E.D. Tex. 2004) ..................................................................................... 13 Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002) .................................................................................................. 5 Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) ............................................................................................ 5, 10 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) .................................................................................................. 3 Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360 (Fed. Cir. 2000) ................................................................................................ 21 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) .................................................................................................... 4 Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) .................................................................................................. 13 WhitServe LLC v. GoDaddy.com, Inc., No. 11-cv-948, 2014 WL 5668335 (D. Conn. Nov. 4, 2014) .................................................. 14 Widevine Techs., Inc. v. Verimatrix, Inc., No. 07-cv-321, 2009 WL 3734106 (E.D. Tex. Nov. 4, 2009) ................................................. 14 Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459 (Fed. Cir. June 16, 2015) .................................... 13, 17, 18 FEDERAL STATUTORY AUTHORITIES 35 U.S.C. § 112 ................................................................................................................. 13, 14, 16 v 8 I. INTRODUCTION Plaintiffs IXI IP, LLC and IXI Mobile (R&D), Ltd.'s (collectively, "IXI") claim constructions follow governing Federal Circuit authority, are consistent with the intrinsic and extrinsic evidence, and provide meanings that a jury will easily understand. Further, a person having ordinary skill in the art ("PHOSITA") at the time of each invention would have understood IXI's positions as correct. In contrast, Defendants' proposed constructions violate the teachings of the Federal Circuit by improperly attempting to inject unsupported and confusing limitations into the claims, while reading out preferred embodiments. Most importantly, Defendants' arguments contradict the plain language of the claims themselves. In short, Defendants' proposals are litigation driven to avoid infringement and should be rejected. II. OVERVIEW OF THE PATENTS-IN-SUIT The three Patents-In-Suit generally relate to communication networks. 1 Stated simply, the Patents-in-Suit provide new and useful ways for devices in a Wireless Local Area Network ("WLAN") and a Wide Area Network ("WAN") to communicate with each other and provide network services. These patents were invented by a team of inventors led by Amit Haller to protect IXI's Personal Mobile Gateway ("PMG") solution. In the early 2000s, IXI licensed various aspects of its PMG solution to industry leaders, including Defendant Samsung. A. The Inventions Described and Claimed in the '033 Patent The '033 Patent claims a system for wireless devices to communicate effectively with each other and access information from a WAN, such as the Internet. As illustrated below in a modified version of Figure 1 of the '033 Patent, one embodiment describes a system (System 100) and device (Gateway Device 106) for providing one or more devices (Terminals 107) in a 1 The Patents-in-Suit are U.S. Patent No. 7,039,033, U.S. Patent No. 7,295,532, and U.S. Patent No. 7,016,648. 8 WLAN, such as a Wi-Fi or Bluetooth network, with access to one or more servers (Server 101 and Server 102) in a WAN, such as the cellular network (Cellular Network 105) and/or the Internet (Internet 103). 2 The red circle below illustrates an exemplary WAN and the blue circle an exemplary WLAN. As shown below, Gateway Device 106 may be part of both the WLAN and WAN networks. Gateway Device 106 includes a service repository software component to identify and/or identify and search for services offered by Terminals 107. For example, Gateway Device 106 may identify one terminal as a printer with a printing service. Each Terminal 107 may be a smart terminal, such as a laptop computer or another device with a powerful central processor, or it may be a thin terminal, such as a watch or another device with a relatively low-power central processor that serves as a peripheral to an application server in the WLAN (e.g., Gateway Device 106). 3 B. The Inventions Described and Claimed in the '532 Patent The '532 Patent claims a handheld device for enabling communication between one or more devices connected to a WAN and one or more devices connected to a WLAN. The '532 2 Figure 1 from the '033 Patent is similar to Figures 1 from the '532 and '648 Patents and is informative of the general system architecture claimed by those Patents-in-Suit. 3 See, e.g., '033 [4: 62- 5: 8]. 2 8 Patent focuses on an "interface software component." The "interface software component" allows a network service software component to be added to the handheld device from a device connected to the cellular network. The network service software component gives the handheld device the ability to offer network services to one or more devices in the WLAN. C. The Inventions Described and Claimed in the '648 Patent The '648 Patent claims systems and methods that likewise involve communications between WAN and WLAN devices. In contrast to the other two patents, the '648 Patent concentrates on downloading a software component from a WAN device in response to certain types of information (e.g., manufacturer type and type of device) that is sent from a WLAN device to the WAN device via Gateway Device 106. III. ARGUMENT A. Standards Of Claim Construction The construction of patent claims "is a legal question to be determined by the Court." 4 "Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in determination of infringement." 5 Patent claims are entitled to the broadest interpretation consistent with the specification and prosecution history. 6 To properly construe a patent claim, a court must examine the "intrinsic evidence" of its meaning, including the words of the claim itself, the rest 4 Program Rewards Sols. LLC v. Points Int'l Ltd., No. 10-cv-1561, 2012 WL 335660, at *1 (S.D.N.Y. Jan. 13, 2012) (Sullivan, J.) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996)). 5 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). 6 Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). 3 8 of the specification, and, where necessary, the prosecution history. 7 Only if the meaning of a patent claim remains genuinely ambiguous after consideration of the intrinsic evidence may a court also consider extrinsic evidence (evidence other than the patent and its prosecution history, such as a dictionary definition) that is pertinent to the meaning of the claim or a portion of a claim. 8 Interpretation of a claim begins with the words of the claim. 9 Generally, a term used in a patent claim is given its ordinary and customary meaning, which is "the meaning 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." 10 A court must presume that a term means what it says and give full effect to the ordinary meaning unless the court determines that a PHOSITA would be unable to readily understand the meaning of the term. 11 If a claim term is non- 7 See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (explaining that the "prosecution history" of a patent is the written record of communications that occurred between the patentee and the patent office during the office's consideration of the patent application which ultimately issued as the patent). 8 See id. at 1583 ("In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence."); see also Program Rewards Sols. LLC, 2012 WL 335660, at *2 (Sullivan, J.) ("a court construing a patent claim may consult extrinsic evidence such as dictionaries, treaties, and experts in the relevant field; however, such evidence should carry less weight than [] intrinsic evidence.") (citations omitted). 9 Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1248-49 (Fed. Cir. 1998). 10 Phillips, 415 F.3d at 1312-13 (emphasis added); see also Program Rewards Sols. LLC, 2012 WL 335660, at *1 (Sullivan, J.) ("A technical term in the patent document is given its ordinary meaning, that is, 'the meaning that it would be given by persons experienced in the field of the invention, unless it is apparent from the patent and prosecution history that the inventor used the term with a different meaning.'") (quoting Kwik Prods., Inc. v. Nat'l Express, Inc., 356 F. Supp. 2d 303, 315 (S.D.N.Y. 2005) (quotations omitted)). 11 Johnson Worldwide Assocs. Inc. v. Zebco Corp., 175 F.3d 985, 989-90 (Fed. Cir. 1999) (citing Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); E.I. Du Pont De Nemours & Co. v. Phillips Petroleum, 849 F.2d 1430, 1433 (Fed. Cir. 1988); Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984)). 4 8 technical and derives no special meaning from the patent or its prosecution history, then the court has no need to function as a thesaurus. 12 A court may only deviate from a term's ordinary meaning under two limited circumstances. 13 First, if the specification ascribes a meaning different from its ordinary meaning, then the patentee's lexicography governs and the court is compelled to adopt that meaning. 14 Second, a court must interpret a claim term consistently with any statements or arguments in the prosecution history which: (a) were made by the patentee; and (b) clearly and unmistakably limit the ordinary meaning of the term. 15 A court must avoid importing into the claims any limitation present in the patent's specification that was not intended by the patentee. 16 "Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors 12 See Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (concluding that non-technical terms of art do not require elaborate interpretation). 13 See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) ("There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution."). 14 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001) ("The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication."). 15 SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005); see also, Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) ("We hold that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope."). 16 See, e.g., Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950, (Fed. Cir. 1993) ("It is improper for a court to add extraneous limitations to a claim … apart from any need to interpret what the patentee meant by particular words or phrases in the claim"); see also SciMed Life Sys., Inc., 242 F.3d at 1340 ("one of the cardinal sins of patent law – reading a limitation from the written description into the claims."). 5 8 actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." 17 When these cannons of construction are applied, it is clear that IXI's constructions should be adopted and those of the Defendants rejected. B. THE CLAIM TERMS AT ISSUE 1. The '033 Patent a. The "Service Repository" Terms Term / Claim(s) IXI's Proposal Defendants' Proposal "service repository software No construction necessary. "software component that component" ('033 Patent, stores a collection of Claims 1, 25) Alternatively, "service information to allow discovery software applications on multiple component" devices to discover what services are offered by a network" "a service repository software No construction necessary. Means-plus-function term component to identify a with no disclosure of a service provided by the Alternatively, if the Court corresponding structure: second wireless device" decides this term is governed Indefinite. ('033 Patent, Claim 1) by 35 U.S.C. § 112 (f): Function: "to identify a service provided by the second wireless device" Structure: Service repository 704 and/or plug and play software component 701 embodied as software components and algorithms described at '033 [5: 65-6: 2; 13: 12-18; 14: 39-57; 14: 62- 15: 4], Fig. 7, and/or Bluetooth Service Discovery Protocol, and statutory equivalents "a service repository software No construction necessary. Means-plus-function term 17 Phillips, 415 F.3d at 1316. 6 8 component that identifies a with no disclosure of a plurality of services, in the Alternatively, if the Court corresponding structure: short distance wireless decides this term is governed Indefinite. network, associated with a by 35 U.S.C. § 112 (f): plurality of wireless devices" Function: "identifies a ('033 Patent, Claim 25) plurality of services, in the short distance wireless network, associated with a plurality of wireless devices" Structure: Service repository 704 and/or plug and play software component 701 embodied as software components and algorithms described at '033 [5: 65-6: 2; 13: 12-18; 14: 39-57; 14: 62- 15: 4], Fig. 7, and/or Bluetooth Service Discovery Protocol, and statutory equivalents 1. No construction is necessary and "service repository software component" has its ordinary and customary meaning; in the alternative, the term should be construed as "service discovery software component." When read in context, the meaning of "service repository software component" is clear. The Federal Circuit holds that "proper claim construction. . . demands interpretation of the entire claim in context, not a single element in isolation." 18 Here, Claim 1 recites "a service repository software component to identify a service provided by the second wireless device." 19 Claim 25 recites "a service repository software component that identifies a plurality of services, in the short distance wireless network, associated with a plurality of wireless devices. . . and [] 18 See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999); see also Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir. 2003) ("While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms."). 19 See '033 [15: 57-59] (emphasis added). 7 8 searches for a service, in the plurality of services, to be used by an application software component stored in the first wireless device." 20 Because the words of the claims describe what the "service repository software component(s)" are and what they do, their meanings are readily apparent to a PHOSITA and the jury. 21 The specification discloses the ordinary and customary meanings of the "service repository software components" recited in the claims, namely that these are components of software for identifying (i.e., discovering and describing) terminals and services. 22 Because the specification (including the claims) clearly identifies this meaning, no construction of the term by the Court is necessary. A PHOSITA would understand from the specification that "identifying" services means discovering or describing them. 23 The specification also describes embodiments in which the "service repository software component" provides for "searching of 20 See '033 [17: 7-14] (emphasis added). 21 See Stanacard, LLC v. Rebtel Networks, AB, 680 F. Supp. 2d 483, 487 (S.D.N.Y. 2010) ("[D]istrict courts routinely decline to interpret claim terms where the terms sought to be defined by a party are readily understood."); see also Software Tree, LLC v. Redhat, Inc., No. 09-cv-097, 2010 WL 2232809, at *8 (E.D. Tex. June 1, 2010) (finding claim term clearly understandable to a jury where context explains what it is and what it does); Phillips, 415 F.3d at 1312-1313 (A "fundamental maxim is that the words in a claim should be given their ordinary meaning."). 22 See, e.g., '033 [12: 11-14] ("[s]ervice repository software component 704 allows applications 406, which run on a gateway device 106 or terminals 107, to discover what services are offered by a PAN, and to determine the characteristics of the available services.") (emphasis added); see also '033 [13: 5-9] ("service repository component 704 describes the terminals and the services that are available at a particular time.") (emphasis added); see also '033 [12: 53-56] ("service repository software component 704 provides the capability of describing the participating terminals in a personal area network.") (emphasis added). 23 See Declaration of Joel Williams ("Williams Decl.") dated July 8, 2015 at ¶ 30; see Kickstarter, Inc. v. Fan Funded, LLC, No. 11-cv-6909, 2013 WL 214313, *9-10 (S.D.N.Y. Jan. 18, 2013) (declining to further construe a claim term where that term would be self-explanatory to a PHOSITA). 8 8 services," as recited in Claim 25. 24 A PHOSITA would likewise understand the ordinary and customary meaning of "service repository software component" to include software that identifies services and, optionally, searches those services. 25 Because the ordinary and customary meaning of the "Service Repository" terms is apparent to a PHOSITA (and to a jury) from what is disclosed in the specification, the Court should decline to construe these terms. To the extent the Court believes a construction would aid the jury, "service discovery software component" is supported by both intrinsic and extrinsic evidence. The specification provides support that in the context of these particular claims, the "service repository software component" is performing "service discovery." The specification discloses that "[s]ervice repository software component 704 allows applications 406, which run on a gateway device 106 or terminals 107, to discover what services are offered by a PAN, and to determine the characteristics of the available services." 26 The specification further discloses that "[i]n an embodiment of the present invention, remote applications use a BluetoothTM Service Discovery Protocol ("SDP") to discover what services gateway device 106 offers. Similarly, local applications use SDP in an embodiment of the present invention." 27 That is, the particular "service repository software component" functions described in the asserted claims (i.e., identifying and/or searching for services) are "service discovery" functions. 28 24 See '033 [12: 43-47] ("service repository software component 704 also provides searching of services. This function describes whether listed terminals support listed services. This function enables an application to quickly locate a specific service.") (emphasis added). 25 See Williams Decl. at ¶¶ 27-31. 26 See '033 [12: 11-14] (emphasis added). 27 See '033 [13: 14-18] (emphasis added). 28 See, e.g., Exh. 1, The Authoritative Dictionary of IEEE Standards, p1032 (7th ed. 2000) (defining "service discovery" as "[t]he function of providing transport clients with the ability to 9 8 2. Defendants' proposed construction of "service repository software component" improperly adds unsupported, unnecessary, and confusing limitations. Defendants' proposed construction adds at least three unsupported limitations: 1) "stores a collection of information," 2) "allow applications on multiple devices," and 3) "services are offered by a network." 29 First, nothing in the patent suggests that the service repository software component stores anything. 30 Indeed, the specification describes an embodiment where "service repository 704 pushes new services to a Bluetooth stack SDP database." 31 The specification further describes embodiments where "[t]he storage device stores a software component for controlling the processor" and "[g]ateway software 400 is stored in FLASH 302." 32 These passages suggest to a PHOSITA that storage occurs outside of the service repository software component at the SDP database, a storage device, or memory. 33 This makes sense because this element is a service repository software component to "identify" (Claim 1) and "identif[y]" and "search[] dynamically query service availability within a peer transport entity.") ("Exh. ___" refers to an exhibit of the accompanying Declaration of Mark W. Halderman.); see also Williams Decl. at ¶ 33. 29 See, e.g., DealerTrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012) ("As a general rule, 'it is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.'"); see also Thorner, 669 F.3d at 1366- 1367 ("It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. [Courts] do not read limitations from the specification into claims; [courts] do not redefine words. Only the patentee can do that."). 30 See Program Rewards Sols. LLC, 2012 WL 335660, at *3 (Sullivan, J.) (declining to construe term to include unsupported limitations). 31 '033 [15: 1-4]. 32 '033 [3: 18-19, 30-31; 5: 64-65]. 33 See Williams Decl. at ¶ 32. 10 8 for" (Claim 25) services – not just a mere repository (i.e., not just a storage database or receptacle). 34 The service repository itself is not claimed, but rather a software component associated with the repository. The specification's disclosure of "software components," which includes the service repository software component, does not suggest that the software components include a database or memory, but rather they "represent a software program, a software object, a software function, a software subroutine, a software method, a software instance, a code fragment, singly or in combination." 35 In light of the specification and the plain language of the claim term, a PHOSITA would understand that the service repository software component does not need to "store[] a collection of information" as required by Defendants' proposed construction. 36 Second, Defendants' proposed limitation "allow applications on multiple devices to discover" directly contradicts the plain language of Claim 1. 37 Claim 1 recites "a second wireless device" and "a service repository software component to identify a service provided by the second wireless device." 38 This plain language makes clear that the service repository software component of Claim 1 need only identify one service provided by one device – not 34 See Jackrel v. Paragon Sporting Goods, 171 F. Supp. 2d 163, 167-68 (S.D.N.Y. 2001) (rejecting proposed constructions of terms that were contrary to the plain language of the claims); see also Honeywell Int'l, Inc. v. Acer Am. Corp., No. 07-cv-125, 2009 WL 68896, *9 (E.D. Tex. Jan. 7, 2009) (explaining that a construction that contradicts claim language "must be rejected"). 35 '033 [5: 65-6: 2]. 36 See Williams Decl. at ¶ 32. 37 See Jackrel, 171 F. Supp. 2d at 167-68 (rejecting proposed constructions of terms that were contrary to the plain language of the claims); see also Honeywell Int'l, Inc., 2009 WL 68896, at *9 (explaining that a construction that contradicts claim language "must be rejected"). 38 '033 [15: 49, 57-59]. 11 8 multiple devices. Further, Claim 1 is agnostic as to where the service repository software component identifies the service. The Claim does not suggest that the service repository software component must identify a service to "applications," and the Claim should be entitled to its broadest interpretation consistent with the specification and prosecution history. 39 In addition, the doctrine of claim differentiation instructs that "[t]he 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." 40 Here, dependent Claim 14 adds the limitation "application software component" and dependent Claim 15 adds the limitation "a third wireless device" to the system of Claim 1. 41 Thus, the doctrine creates a presumption that Claim 1 is broader than these dependent claims and does not include the limitations that Defendants seek to add – i.e., "applications" on "multiple devices." Finally, Defendants' proposed limitation "services are offered by a network" is unsupported and would confuse the jury. 42 Claim 1 recites that "a service is provided by the second wireless device." 43 Claim 25 recites "a plurality of services. . . associated with a plurality of wireless devices." 44 The claims make clear that the services are provided by 39 Phillips, 415 F.3d at 1323. 40 Id. at 1314-15 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)); see also Lasermax, Inc. v. Glatter, No. 01-cv-6500, 2005 WL 1981571, at *4 (S.D.N.Y. Aug. 17, 2005) ("Thus, under the doctrine, a dependent claim and a corresponding independent claim should not be construed to have the same scope; the dependent claim should have an additional limitation."). 41 '033 [16: 33-40]. 42 Stanacard, LLC, 680 F. Supp. 2d at 493 (rejecting proposed definition that would only serve to introduce additional terms into the claim, resulting in confusion for the jury). 43 '033 [15: 59] (emphasis added). 44 '033 [17: 8-10] (emphasis added). 12 8 endpoints (e.g., a wireless device(s)) in the network and not by the network itself. Defendants' construction would require the Court to further construe what it means to be "offered by a network." 45 There is no reason to depart from the clear language of the claims. 3. The "service repository software component" terms are not governed by 35 U.S.C. § 112 (f). 46 Defendants argue the "service repository software component" terms are governed by §112 (f) despite the presumption against its application that arises because neither claim element uses the word "means." 47 The Federal Circuit holds that the absence of the word "means" in a claim element creates a presumption that § 112 (f) does not apply. 48 To overcome this presumption, Defendants must demonstrate "that the claim terms fail[] to 'recite sufficiently definite structure' or else recite[] 'function without reciting sufficient structure for performing that function.'" 49 Here, the disputed claim terms are not governed by § 112 (f) and should be given their ordinary and customary meanings. The claim terms do not use the word "means," so it is presumed that § 112 (f) does not apply. Further, Defendants cannot rebut the presumption against applying § 112 (f) because the terms recite sufficiently definite structure. At the time of 45 See STMicroelectronics, Inc. v. Motorola, Inc., 327 F. Supp. 2d 687, 705 (E.D. Tex. 2004) (rejecting proposed construction that "would itself require construction for the jury"). 46 35 U.S.C. §112(f) was formerly called 35 U.S.C. § 112, sixth paragraph. 47 Section 112 (f) provides that "[a]n 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." 48 See Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459, at *7 (Fed. Cir. June 16, 2015). 49 Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). 13 8 the invention, "software" was common parlance used to identify structure. 50 The specification further defines the structure of an embodiment of a "software component." 51 Courts have also consistently found "software" to connote sufficiently definite structure. 52 Similarly, courts have found that "component" connotes sufficiently definite structure. 53 Indeed, courts have recognized that finding otherwise "'improperly would subject every software patent and many electronics patents' to the application of § 112 (f)." 54 When read in light of the entire written description, a PHOSITA would recognize these terms as having sufficiently definite structure to avoid invocation of § 112 (f). 55 Indeed, the 50 See Exh. 2, IBM Dictionary of Computing, p632 (10th ed. 1993) (defining "software" as "[a]ll or part of the programs, procedures, rules, and associated documentation of a data processing system. Software is an intellectual creation that is independent of the medium on which it is recorded."). 51 See '033 [5: 65- 6:2] ("In an embodiment of the present invention, software components referenced in FIGS. 4-7 represent a software program, a software object, a software function, a software subroutine, a software method, a software instance, a code fragment, singly or in combination."). 52 See, e.g., WhitServe LLC v. GoDaddy.com, Inc., No. 11-cv-948, 2014 WL 5668335, *3 (D. Conn. Nov. 4, 2014) ("[T]he term 'software' is not a generic structural term. . . nor is it a nonce word that is 'simply a substitute for the term 'means for[.]' Rather, it is a noun with a specific structural meaning. . . . Moreover, insofar as the dictionary definition is an independent relevant consideration, the fact that the word is so defined cuts in favor of a determination that the word is not means-plus.") (internal citations omitted). 53 See Widevine Techs., Inc. v. Verimatrix, Inc., No. 07-cv-321, 2009 WL 3734106, *16 (E.D. Tex. Nov. 4, 2009) ("Unlike 'device,' 'component' does not refer to a general purpose computer that is programmed to perform specified functions. 'Component' refers to software that is an element of the 'computer-readable storage medium' of Claim 9 or an element of the 'encryption bridge' of Claim 1. The Court finds that the claim provides sufficient structure to 'component,' . . . and is therefore not governed by 35 U.S.C. § 112(6)."). 54 Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding "computer code" to have sufficient structure to escape application of § 112(f)). A PHOSITA would understand "computer code" to be a "software component." Williams Decl. at ¶ 35. 55 See, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) ("The correct inquiry, when 'means' is absent from a limitation, is whether the limitation, read in light 14 8 structure of "software component" is bolstered by the surrounding context of the claim element. The claims do not simply recite a "software component," but rather a "service repository software component" to "identify" (Claim 1) and "identify" and "search for" (Claim 25) services. A PHOSITA would understand the structure of a "service repository software component" as sufficient to perform these functions because many embodiments of such software were well known structures at the time of the invention. 56 Indeed, the Federal Circuit has recognized that when "[a] structure-connoting term. . . is coupled with a description of [its] operation, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art." 57 Further, other parts of the written description provide a PHOSITA with additional understanding and examples as to the structure referred to by these terms. For example, a PHOSITA would recognize the flowchart in Figure 7, as definite structure embodying the "service repository software components." 58 In addition, a PHOSITA would also recognize the Bluetooth Service Discovery Protocol of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art."); see also Williams Decl. at ¶¶ 34-38. 56 See Williams Decl. at ¶¶ 34-38; see, e.g., Exh. 3, U.S. Patent No. 6,201,862 (dated March 13, 2001) at [3: 11-13; 8: 43-45] ("With the service repository server distribution is transparent and system configuration is very easily achieved through plug and play. . . .Upon request for a new service session, SSP1 accesses the service repository server REP to find an available service server SERV to execute the service session.). 57 See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); see also Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1356 (Fed. Cir. 2006) ("The claim language here too does not merely describe a circuit; it adds further structure by describing the operation of the circuit."). 58 See Williams Decl. at ¶ 38. 15 8 as definite structures embodying the "service repository software components." 59 The Federal Circuit has found reference to protocols (e.g., the Windows operating system protocol) in the specification as connoting sufficiently definite structure. 60 Just as the "Windows protocol" described sufficiently definite structure to a PHOSITA, so too does "service repository software component" when considered in light of the disclosure of the Bluetooth SDP. In sum, there is no basis to rebut the presumption that § 112 (f) does not apply here. 4. Even if the "service repository software component" terms are governed by 35 U.S.C. § 112 (f), the terms are definite. If the Court applies 35 U.S.C. § 112 (f), then the specification contains adequate structure that is clearly linked to the recited function to avoid a finding of indefiniteness. For means-plus- function terms, there are two steps in determining whether the term is definite: "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." 61 Once the corresponding structure is identified, the Court must determine whether the structure is adequate to perform the recited function. 62 It is Defendants' burden to prove by clear and convincing evidence that "the specification lacks adequate disclosure of structure to be understood by one skilled in the art as 59 See Williams Decl. at ¶ 38; see also '033 [13: 14-18] ("remote applications use BluetoothTM Service Discovery Protocol ('SDP') to discover what services gateway device 106 offers. Similary, local applications use SDP. . . ."); see '033 [14: 62-66] ("Media abstraction layer 504 obtains an SDP of a remote terminal application. Media abstraction layer 504 passes the SDP call to service repository 704. Service repository 704 answers media abstraction layer 504, using SDP, according to services that are registered."). 60 See, e.g., AllVoice Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236, 1242 (Fed. Cir. 2007). 61 See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003)). 62 Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311-1312 (Fed. Cir. 2012). 16 8 able to perform the recited functions." 63 For step 1, the Court need only look to the claim elements. The recited function for Claim 1 is "to identify a service provided by the second wireless device." 64 For Claim 25, the recited function is "identifies a plurality of services, in the short distance wireless network, associated with a plurality of wireless devices. . . and [] searches for a service, in the plurality of services, to be used by an application software component stored in the first wireless device." 65 For step 2, the functions of "identifying" and "searching" for services are clearly linked or associated with structure in the specification. 66 The specification provides that "service repository software component 704" "discover[s]" and "describes" terminals or services. 67 These synonyms for "identifying" clearly links the function to "service repository software component 704." 68 The specification also clearly links "service repository software component 63 Intel Corp. v. VIA Techs, Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003). 64 See '033 [15: 57-59] (emphasis added). 65 See '033 [17: 7-14] (emphasis added). 66 See Williamson, 2015 WL 3687459 at *7 (citing Noah Sys., 675 F.3d at 1311-12). 67 See, e.g., '033 [12: 11-14] ("[s]ervice repository software component 704 allows applications 406, which run on a gateway device 106 or terminals 107, to discover what services are offered by a PAN, and to determine the characteristics of the available services.") (emphasis added); see '033 [13: 5-9] ("service repository component 704 describes the terminals and the services that are available at a particular time.") (emphasis added); see also '033 [12: 53-56] ("service repository software component 704 provides the capability of describing the participating terminals in a personal area network.") (emphasis added). 68 See, e.g., Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004); see Williams Decl. at ¶ 30; see also Exh. 6, Roget's 21st Century Thesaurus, Third Edition. Philip Lief Group 2009. http://www.thesaurus.com/browse/compose (last accessed July 7, 2015). 17 8 704" to the function of "searching of services." 69 The specification further links "plug and play software component 701" to the function of "identifying." 70 Specifically, the specification describes that "[w]hen a terminal is turned on for the first time, a plug and play component 701. . . identifies that this is a new terminal." 71 As part of this identification, plug and play component 701 "resolves the terminal package URL with backend middleware. . . . [i]f the package contains drivers, the driver's services are offered to service repository 704." 72 Thus, the "plug and play component 701," alone or together with "service repository 704," performs the function of "identifying" the services from the second wireless device (i.e., the terminal). Because the "service repository software component" claim terms are computer- implemented, the Federal Circuit applies special rules for means-plus-function terms. Namely, the specification should disclose an algorithm for performing the claimed functions. 73 The algorithm may "be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." 74 Here, "service repository software component 704" and "plug and play component 701," as disclosed in Figure 7 and the related portions of the specification, provide algorithmic 69 See '033 [12: 43-47] ("service reposition software component 704 also provides searching of services. This function describes whether listed terminals support listed services. This function enables an application to quickly locate a specific service.") (emphasis added). 70 See '033 ("The Plug and Play component is responsible for identifying the introduction of the new terminal and deciding on the software needed to be downloaded.) (emphasis added). 71 '033 [13: 50-52] (emphasis added). 72 '033 [14: 18-23] (emphasis added). 73 Williamson, 2015 WL 3687459 at *10. 74 Id. (citing Noah Sys., 675 F.3d at 1312). 18 8 structure corresponding to the recited functions. The flow chart of Figure 7 (reproduced below, with boxes and highlighting added for emphasis) illustrates how "plug and play component 701" and/or "service repository software component 704" perform the recited functions. The specification further identifies algorithms that perform the recited functions in prose. 75 Finally, the specification discloses Plug and Play and the Bluetooth Service Discovery Protocol, which inherently include algorithms for identifying and searching for services. 76 To determine whether the corresponding structure is adequate to perform the recited functions, the Court may look at the entire intrinsic record (including prosecution history, materials incorporated by reference, etc.) and consider what a PHOSITA would bring to the 75 See, e.g., '033 [14: 39-57] ("There are two methods for a gateway device 106 application to inquire for a specific service. The first terminal method includes the application asking service repository 704 to describe the terminals in the current personal area network and to describe whether any of these terminals provide the requested service. . . . The second service method includes an application querying service repository 704 to provide the registered services that suit a requested class. The application then searches the registered services to determine which capabilities are provided by the registered services."). 76 See, e.g., '033 [13: 12-18; 44- 14: 34]; see, e.g., AllVoice Computing PLC, 504 F.3d at 1242 (finding that reference in the specification to the Windows protocol was sufficient structure to perform recited function for means-plus-function term). 19 8 understanding of the invention. 77 As evidence supporting a PHOSITA's understanding that the disclosed algorithms are adequate structure to perform the recited functions, IXI provides the Declaration of Joel Williams. 78 b. "thin terminal" Term / Claim(s) IXI's Proposal Defendants' Proposal "thin terminal" ('033 Patent, No construction necessary. Indefinite. Claims 7, 46) Alternatively, "a relatively low power peripheral to an application server" There is no reason to construe "thin terminal" because the term has its ordinary and customary meaning. 79 Indeed, one of the inventors of the '033 Patent testified that the meaning of "thin terminals" started "back in the '60s -- '70s maybe, and numerous other incarnations of -- of this concept of having a central device that other things attach to." 80 To the extent the Court believes a construction is necessary, it should be "a relatively low-power peripheral to an application server." This construction is consistent with the embodiment described in the specification. See, e.g., '033 [5: 2-7] ("Thin terminals have a relatively low power central 77 Noah Sys., 675 F.3d at 1311-12. 78 See Williams Decl. at ¶¶ 39-46. 79 See Exh. 4, Newton's Telecomm, p696 (17 ed. 2001) (defining "thin client" as "[a] low- cost computing device that works in a server-centric computing model. The clients typically do not require state-of-the-art, powerful processors and large amounts of RAM and ROM because they access applications from a central server of network."). 80 Exh. 5, Deposition of Peter Fornell dated July 1, 2015 at [54: 16-20]. While Mr. Fornell's testimony shows a PHOSITA's understanding of the meanings of certain hardware terminology, such as "thin terminals," Mr. Fornell's knowledge of the software/operating system aspects of the invention are very limited. See, e.g., id. at [51: 11-13] (Q. "Tell me which of the IXI products you worked on. A. So I worked on all the hardware devices."); see also id. at [34: 15-20] (Q. "And when you talk about the group within IXI that was focused on the OS, or the operating system, what sort of functionality was within that operating system? A. I really can't remember. I was not really deeply involved in the OS part."). 20 8 processor and operating system. They are mainly used as peripherals to an Application server in the PAN and their main task is user interaction, rendering output for a user and providing an Application server with a user's input."). Defendants cannot meet their burden of proving by clear and convincing evidence that "thin terminal" is indefinite. 81 A patent is invalid for indefiniteness only if "its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonably certainty, those skilled in the art about the scope of the invention." 82 Here, a PHOSITA would understand with reasonably certainty the scope of "thin terminal." 83 As explained above, the term was well understood at the time of invention and the specification further demarcates its scope. c. "the first wireless device. . . receives the first short-range radio signal" / "selectively transfer information. . . between the first wireless device and the cellular network" Term / Claim(s) IXI's Proposal Defendants' Proposal "the first wireless device No construction necessary. "the first wireless device communicates with the alternately either cellular network and receives communicates with the cellular the first short-range radio network or receives a short- signal" ('033 Patent, Claim 1) range radio signal, but not both at the same time" "selectively transfer No construction necessary. "selectively transfer information. . .between the information. . . between first wireless device and the either the first wireless cellular network" ('033 device and the second wireless Patent, Claim device, or between 25) the second wireless device 81 See Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000) ("An accused infringer alleging that a claim is invalid must overcome the statutory presumption of validity that attaches to an issued patent, see 35 U.S.C. § 282 (1994), by proving invalidity by facts supported by clear and convincing evidence."). 82 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). 83 See Williams Decl. at ¶¶ 47-50. 21 8 and the cellular network, but not both at the same time" There is no reason for the Court to depart from the ordinary and customary meaning of the terms. 84 The words of the claim terms are not highly technical, so there is no need to simplify the terms for the jury's understanding. Further, the specification does not ascribe a meaning that departs from the ordinary meanings of the terms. Defendants' proposed construction contradicts the plain language of the claims by changing "and" to "either. . . or" and adding the negative limitation "but not both at the same time." Changing "and" to "either. . . or" contradicts the ordinary meaning of the claim language. 85 Claim 1 states that the "the first wireless device communicates with the cellular network and receives the first short-range radio signal," while Claim 25 states "selectively transfer information. . . between the first wireless device and the cellular network." 86 The ordinary meaning of the word "and" indicates that both communication and receiving functions occur, and does not exclude a situation in which those functions occur at the same time. There is no basis to include the negative limitation "but not both at the same time." The Federal Circuit "has cautioned against reading negative limitations into claims where there is no express disclaimer or independent lexicography in the written description that would justify 84 See, e.g., Kickstarter, Inc., 2013 WL 214313 at *9-10 (declining to further construe a claim term where that term would be self-explanatory to a PHOSITA). 85 See Brown, 265 F.3d at 1352 (finding that non-technical terms of art such as "or" and "and" do not require interpretation and have their ordinary meanings); see also Jackrel, 171 F. Supp. 2d at 167-68 (rejecting proposed constructions of terms that were contrary to the plain language of the claims); see also Honeywell Int'l, Inc., 2009 WL 68896 at *9 (E.D. Tex. Jan. 7, 2009) (explaining that a construction that contradicts claim language "must be rejected"). 86 '033 [15: 45-48; 17: 2-6] (emphasis added). 22 8 adding that negative limitation." 87 There is no such basis here, and Defendants' proposed construction should be rejected. 5. The '532 Patent a. "network service software component that provides one or more network services to the wireless local area network" Term / Claim(s) IXI's Proposal Defendants' Proposal "network service software No construction necessary. "software component that component that provides one or provides a network capability more network services to the to one or more layers of the wireless local area network" wireless local area network" ('532 Patent, Claim 1) There is no reason for the Court to construe this term because it has its ordinary and customary meaning. The claim term includes no technical or complex words that the jury would fail to understand. 88 As illustrated below in Figure 5, the specification explains that embodiments of a "network service" may be, for example, "DHCP/PPP," "Routing," "NAT," "BAP" or services provided by network service plugin 406a–406k. 89 In one embodiment, plugins, such as those described in Figure 5, are network service 87 See Apple Inc. v. Samsung Elecs. Co., Ltd., No 12-cv-00630, 2013 WL 1502181, at *24 (N.D. Cal. April 10, 2013) (citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)). 88 See Brown, 265 F.3d at 1352 (concluding that non-technical terms of art do not require elaborate interpretation). 89 See '532 [10: 2-4] ("microrouter 404 includes hooks 590 allowing for the extension of microrouter 404 networking services, such as plug-ins 406."). 23 8 software components that allow the microrouter device to share services with devices in the wireless local area network. 90 The specification describes other embodiments of network services, including a "pairing management" service, a "VPN" service, a "firewall" service, a "statistics" service, a "link optimization" service, a "reverse firewall" service, a "flashing" service, a "messaging" service, a "service level enforcement" service, a "Bluetooth LAN access profile" service, and a "dial-up" service. 91 In addition, the specification describes a "Device Resources Access" service 92 and a "Terminal Management/Monitoring" service. 93 Defendants' proposed construction injects confusing and unsupported limitations into the claims. 94 First, changing the claim language from "one or more network services" to "a network capability" is not supported by the claim language or the rest of the specification. 95 Defendants seek to avoid infringement by changing "service" to "capability." Rather than being a service offered over a network as the claim language reads, Defendants attempt to change the meaning of "network service" to mean an enhancement to the capability of the network itself. Both the 90 See '532 [10: 28-33] ("Plug-ins 406 are fully activated by microrouter 404, which has full control over them in an embodiment of the present invention. In some sense, plug-ins are like a Dynamic Link Library ("DLL") that have a predetermined set of functions that a microrouter can call in order for them to realize the needed functionality."). 91 See '532 [2: 47-3: 48]. 92 See '532 [13: 55-61] ("DRA software component plug-in 406j .enables a terminal to implement a Device Resources Access protocol over IP in order to gain access to any of the following resources: 1) phone book, 2) play a ring tone, 3) initiate a call, 4) user interface, or 5) other device resources."). 93 See '532 [14: 15-17] ("MNG software component plug-in 406k enables management, configuration and monitoring of terminals 107"). 94 Stanacard, LLC, 680 F. Supp. 2d at 493 (rejecting proposed definition that would only serve to introduce additional terms into the claim, resulting in confusion for the jury). 95 See Program Rewards Sols. LLC, 2012 WL 335660 at *3 (Sullivan, J.) (declining to construe term to include unsupported limitations). 24 8 claims and the rest of the specification, however, consistently use the words "network service" and not "network capability." Defendants' construction is also directly contradicted by the preferred embodiments, which mention services as something different than an enhancement of network capability, such as a service for sending an image to a wireless device. 96 Further, the claim makes clear that one or more network services may be provided, rather than only one capability as suggested by Defendants. Second, the proposed limitation "to one or more layers" of the wireless local area network unnecessarily adds technical language that a jury will struggle to understand. In context, the claim makes clear that the "one or more devices connected to the wireless local area network" may be provided with the "one or more network services" from the claimed handheld device. 97 Defendants' inclusion of "one or more layers" seems to refer to the seven layers of the Open Systems Interconnection ("OSI") model. The "OSI model defines a seven-layer functional model, including descriptions of the functions defined for each layer." 98 While the network services discussed in the claims are provided to devices operating at one or more layers of the OSI model, adding a limitation alluding to providing services to a layer of a conceptual model defined by functionality is unnecessary and, at best, will serve to confuse the jury. 99 This is especially true where, as here, the claim is an apparatus claim, which is defined by what the 96 See '532 [3: 18-27]. 97 See '532 [16: 47-51]. 98 Exh. 1, The Authoritative Dictionary of IEEE Standards, p764 (7th ed. 2000). 99 See, e.g., Stanacard, LLC, 680 F. Supp. 2d at 493 (rejecting proposed definition that would only serve to introduce additional terms into the claim, resulting in confusion for the jury). 25 8 device is rather than what it does. 100 b. "interface software component" Term / Claim(s) IXI's Proposal Defendants' Proposal "interface software No construction necessary. "software component that component" connects other software ('532 Patent, Claim 1) components for purposes of passing information from one to another" There is no reason for the Court to construe this term because it has its ordinary and customary meaning. The claim term includes no complex words and the jury will readily understand the meaning of the term. In the context of the claim, the meaning of "interface software component" is simple — it is a software component "to add a first network service software component that provides one or more network services." 101 The specification explains that in an embodiment of the invention "hooks 590" are the interface "allowing for the extension of microrouter 404 network services." 102 Hooks 590 may be an "application program interface." 103 An "application program interface" is "[t]he interface between the application software and the application platform, across which all services are provided." 104 Hooks 590, such as APIs, enable plug-ins 406 (i.e., network service software components) to be added.105 100 See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) ("apparatus claims cover what a device is, not what a device does") (original emphasis). 101 See '532 [16: 59-61]; see also '532 [4: 19-23] ("An interface software component allows a network service software component to be added."). 102 See '532 [10: 2-4]. 103 See '532 [10: 5-6] ("In an embodiment of the present invention, hooks 590 are application program interfaces ('API') for plug-ins 406."). 104 See also Exh. 1, The Authoritative Dictionary of IEEE Standards, p46 (7th ed. 2000) (defining "application program interface" as "[t]he interface between the application software and the application platform access which all services are provided"). 105 See '532 [10: 18-20]. 26 8 As shown in Figure 4, the interface software component may also be a "Graphics User Interface ('GUI') 407." 106 Defendants' proposed construction adds the unsupported limitation that the interface software component "connects other software components for purposes of passing information from one to another." First, Defendants' construction suggests that a connection is required, but the claim is a device claim that requires only an interface software component "to add" a first network service software component. 107 Second, Defendants' construction states that the interface must "connect[] other software components for purposes of passing information from one to another." It is clear from the claim that the interface software component can be used to add one software component ("a first network service software component"), which is "loaded into the storage device." 108 From the plain language of the claim, it is clear that only one software component need be downloaded to the storage device of the hand held device, and there is nothing that suggests that interface software component connects multiple other software components for passing information between them. 109 After the "network service software component" has been added, it may provide "one or more services" to devices in the WLAN. c. "loaded. . . from the one or more devices connected to the. . . cellular networks" Term / Claim(s) IXI's Proposal Defendants' Proposal "loaded into the storage No construction necessary. "loaded into the storage device device from the one or more via a cellular network from the 106 '532 [8: 23-24]. 107 See Hewlett-Packard Co., 909 F.2d at 1468 ("apparatus claims cover what a device is, not what a device does") (original emphasis). 108 '532 [16: 59-61] (emphasis added). 109 See, e.g., Jackrel, 171 F. Supp. 2d at 167-68 (rejecting proposed constructions of terms that were contrary to the plain language of the claims). 27 8 devices connected to the one one more devices connected to or more cellular networks" the one or more cellular ('532 Patent, Claim 1) networks" The only dispute is whether the phrase "via a cellular network" needs to be added to the clear language of the claim. The plain meaning of the claim is clear, which states that the first network service software component is loaded into the storage device "from the one or more devices connected to the. . . cellular networks." 110 At best, Defendants' proposed construction is superfluous of the existing claim language. 111 Further, adding "loaded. . . via a cellular network" may risk confusing the jury into thinking that the cellular network is performing the loading of the software component instead of providing a communication pathway for transmitting the software component, as recited in the claim. d. "service level enforcement software component" Term / Claim(s) IXI's Proposal Defendants' Proposal "service level enforcement No construction "software component that enables a software component"('532 necessary. service provider to enforce service Patent, Claim 24) level agreements with users" The meaning of this term is clear, and construction is unwarranted. Defendants attempt to rewrite the plain claim language of "service level enforcement software component" from a software component "to limit an amount of packets transferred from a first wireless device" to one "that enables a service provider to enforce service level agreements with users." Defendants seek to limit the term to an embodiment where the "service level enforcement software component "enables operator 115 to verify and enforce service level agreements with users."112 110 '532 [16: 62-65]. 111 See British Telecomms. PLC v. Prodigy Commc'ns Corp., 189 F. Supp. 2d 101, 117 (S.D.N.Y. 2002) ("It will unnecessarily confuse the jury to incorporate a second word that means much the same thing."). 112 '532 [13: 38-40]. 28 8 First, it is improper to limit the claims to the embodiments of the specification. 113 Second, the specification makes clear that "operator 115" can be distinct from a "service provider." 114 In sum, the Court should reject Defendants' proposed construction because it improperly attempts to limit the claim to an embodiment and conflicts with the teachings of the specification. 6. The '648 Patent a. "device" / "cellular device" Term / Claim(s) IXI's Proposal Defendants' Proposal "device" / "cellular device" No construction necessary. device = "a device not capable ('648 Patent, Claims 1, 14, 15, of direct data communication 30 and their dependents) with a cellular network" cellular device = "a device capable of direct data communication with a cellular network" These terms are clear in the context of the claims. For example, Claim 15 reads "a device to generate a short-range radio signal. . ." and "a cellular device to generate a cellular signal." 115 There is no reason to add Defendants' negative limitation. The Federal Circuit "has cautioned against reading negative limitations into claims where there is no express disclaimer or independent lexicography in the written description that would justify adding that negative limitation." 116 Defendants improperly seek to limit the claim to the embodiment of Figure 3b— an embodiment where the device does not include a cellular radio frequency transceiver. 113 See, e.g., DealerTrack, Inc., 674 F.3d at 1327 ("As a general rule, 'it is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.'"). 114 See, e.g., '532 [15: 58-60] ("Manager 700 can be installed by a service provider on Internet 103, or by an operator 115 on its IP backend network having server 102.") (emphasis added). 115 '648 [16: 26-33] (emphasis added). 116 See Apple Inc., 2013 WL 1502181 at *24 (citing Omega Eng'g, Inc., 334 F.3d at 1324). 29 8 Dependent claim 8, however, claims an embodiment where "the device is a cellular device."117 Because Defendants' proposal directly contradicts the claim language, it must be rejected. 118 In addition, Defendants' construction adds the unsupported limitation "direct data communication with a cellular network." The patent claims communication between a "device" and a "processing device" via a "cellular device." 119 The processing device may be (but is not required to be) in a cellular network. 120 Because dependent Claim 28 teaches the system of Claim 15 "wherein the processing device is in a wide area network, including a cellular network," the doctrine of claim differentiation instructs that communication in Claim 15 need not be with a device in a cellular network. 121 Therefore, the Court should reject Defendants' proposed construction. IV. CONCLUSION For the above stated reasons, IXI's proposed constructions should be adopted in their entirety. Dated: July 8, 2015 /s/ Thomas S. Biemer THOMAS S. BIEMER 117 See, e.g., '648 [Claim 8] (emphasis added). 118 See Jackrel, 171 F. Supp. 2d at 167-68 (rejecting proposed constructions of terms that were contrary to the plain language of the claims); see also Honeywell Int'l, Inc., 2009 WL 68896 at *9 (explaining that a construction that contradicts claim language "must be rejected"). 119 See, e.g., '648 [Claim 15] (emphasis added). 120 See, e.g., '648 [Claim 28] ("The system of claim 15, wherein the processing device is in a wide area network including a cellular network."). 121 Phillips, 415 F.3d at 1314-15 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)); see also Lasermax, Inc., 2005 WL 1981571 at *4 ("Thus, under the doctrine, a dependent claim and a corresponding independent claim should not be construed to have the same scope; the dependent claim should have an additional limitation."). 30 8 CERTIFICATE OF SERVICE I, Thomas S. Biemer, hereby certify that, on July 8, 2015, I caused the foregoing Opening Claim Construction Brief with Supporting Declarations and Exhibits of Plaintiffs, IXI MOBILE (R&D) Ltd. and IXI IP, LLC to be filed with the Clerk of the Court and served in accordance with the Federal Rules of Civil Procedure, and/or the Southern District's Local Rules, and/or the Southern District's Rules on Electronic Service upon the following parties and participants: Upon Counsel for the Blackberry Defendants As Follows: Brian Charles Riopelle Email: briopelle@mcguirewoods.com Derek H. Swanson Email: dswanson@mcguirewoods.com McGuireWoods LLP One James Center 901 East Cary Street Richmond, VA 23219 Jason W. Cook Email: jcook@mcguirewoods.com Shaun William Hassett Email: shassett@mcguirewoods.com McGuireWoods LLP 2000 Mckinney Avenue, Suite 1400 Dallas, TX 75201 Marshall Beil Email: mbeil@mcguirewoods.com McGuireWoods LLP 1345 Avenue of the Americas, 7th Floor New York, NY 10105 Upon Counsel for the Samsung Defendants as follows: David Rokach Email: david.rokach@kirkland.com Kirkland & Ellis LLP 300 North LaSalle Street Chicago, IL 60654 117633008_1 8 Gregory Steven Arovas Email: greg.arovas@kirkland.com James E. Marina Email: jmarina@kirkland.com James Henry McConnell Email: james.mcconnell@kirkland.com Todd M. Friedman Email: todd.friedman@kirkland.com Kirkland & Ellis LLP (NYC) 601 Lexington Avenue New York, NY 10022 Upon Counsel for the Apple Defendants as follows: Harrison J. Frahn, IV Email: hfrahn@stblaw.com Patrick E. King Email: pking@stblaw.com Simpson Thacher & Bartlett LLP 2475 Hanover Street Palo Alto, CA 94304 Gregory Todd Chuebon Email: gchuebon@stblaw.com Simpson Thacher & Bartlett LLP 425 Lexington Avenue New York, NY 10017 /s/ Thomas S. Biemer Thomas S. Biemer, Esquire Dilworth Paxson LLP 1500 Market Street, Suite 3500(E) Philadelphia, PA 19102 Attorney for Plaintiffs IXI MOBILE (R&D) Ltd. and IXI IP, LLC 117633008_1