Lupercal LLC v. CitiBank, N.A.

Western District of Texas, txwd-6:2019-cv-00201

BRIEF by Lupercal LLC.

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2 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Plaintiff Case No. 6:19-cv-00201-ADA v. JURY TRIAL DEMANDED LEAD CASE CITIBANK, N.A., Defendant LUPERCAL LLC, Case No. 6:19-cv-00202-ADA Plaintiff JURY TRIAL DEMANDED v. PLAINS CAPITAL BANK, Defendant PLAINTIFF'S DISCLOSURE OF PROPOSED CLAIM CONSTRUCTIONS 2 TABLE OF CONTENTS I. INTRODUCTION ....................................................................................................... 1 II. OVERVIEW OF THE '094 PATENT ......................................................................... 1 A. Claims at Issue .................................................................................................. 1 B. Technology Overview ........................................................................................ 4 III. Prior claim construction orders ................................................................................. 7 IV. DISPUTED TERMS ................................................................................................... 7 A. Term 1: "image submission tool" (Claims 30-32, 38, 43-44, 50) ....................... 9 B. Term 2: "pre-process" (Claims 30, 42)............................................................. 10 C. Term 3: "pre-processing parameters" (Claims 30, 42).................................... 11 D. Term 4: "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" (Claims 30, 42) .............................. 13 E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" (Claim 30), "enabling a user to determine whether the first image should be replaced with a first replacement image" (Claim 42) ........................................................................................................ 16 V. CONCLUSION ......................................................................................................... 17 PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |i 2 TABLE OF AUTHORITIES Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010)....................................................................... 8 GoLight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004)....................................................................... 8 Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)....................................................................... 8 Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005)................................................................. 8, 13 Pisony v. Commando Constr., Inc., 2019 U.S. Dist. LEXIS 31524 (W.D. Tex., Jan. 23, 2019) ....................................... 7 SRI Int'l Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985)....................................................................... 8 Summit 6 LLC v. HTC Corp., 2015 U.S. Dist. LEXIS 179647 (N.D. Tex., Mar. 21, 2015) ..................... 7, 9, 10, 12 Summit 6 LLC v. Research in Motion Corp., 2012 U.S. Dist. LEXIS 186414 (N.D. Tex., May 21, 2012) ..................... 7, 9, 10, 12 Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015) .......................................................................... 7, 15 Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) .......................................................................... 8 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)....................................................................... 7 PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |ii 2 EXHIBITS Exh No. Description PX-557 U.S. Patent No. 6,895,557 PX-482 U.S. Patent No. 7,765,482 PX-515 U.S. Patent No. 8,612,515 PX-094 U.S. Patent No. 9,386,094 A Summit 6 LLC v. Research in Motion Corp., 2012 U.S. Dist. LEXIS 186414 (N.D. Tex., May 21, 2012) B Summit 6 LLC v. HTC Corp., 2015 U.S. Dist. LEXIS 179647 (N.D. Tex., Mar. 21, 2015) C Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015) PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |iii 2 I. INTRODUCTION Plaintiff Lupercal, LLC ("Lupercal") presents this opening claim construction brief relating to the eight disputed terms for claims 30-32, 34, 38, 42-44, 46, and 50 of U.S. Patent No. 9,386,094 (the "'094 Patent," exhibit PX-094). II. OVERVIEW OF THE '094 PATENT A. Claims at Issue The following claims at issue are recited below, with disputed terms in bold. 30. A non-transitory computer-readable medium having an image submission tool stored thereon for use on a user device, the image submission tool including: an image identifier section that when executed, causes the image submission tool to: generate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images; enable a user to enter text information as one or more captions for the one or more images or the one or more replacement images; and pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |1 2 more replacement images as specified for use by a receiving party; a submission section that when executed, causes the image submission tool to enable a user to submit the one or more pre-processed images; and an image upload control section that when executed, causes the image submission tool to transmit the one or more pre- processed images. 31. The non-transitory computer-readable medium of claim 30, wherein the image identifier section when executed causes the image submission tool to generate the visual representation from an image file. 32. The non-transitory computer-readable medium of claim 30, wherein the submission section when executed causes the image submission tool to enable a display of a button in a user interface that is selectable by a user to signal a confirmation. 38. The non-transitory computer-readable medium of claim 30, wherein the image upload control section when executed causes the image submission tool to transmit the text information. 42. A computer implemented method performed by an image submission tool on a user device, comprising: causing the image submission tool to generate a visual representation of one or more images, the visual representation enabling a user to determine whether the PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |2 2 one or more images should be replaced with one or more replacement images; causing the image submission tool to enable a user to enter text information for association with the one or more images or the one or more replacement images; causing the image submission tool to pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party; causing the image submission tool to enable a user to submit the one or more pre-processed images; and causing the image submission tool to transmit the one or more pre-processed images. 43. The method of claim 42, wherein the image submission tool generates the visual representation from an image file. 44. The method of claim 42, wherein the image submission tool enables a display of a button in a user interface that is selectable by a user to signal a confirmation. 50. The method of claim 42, further comprising causing the image submission tool to transmit the text information. PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |3 2 B. Technology Overview The inventors of the Patent-in-Suit have been heavily involved in the digital imaging industry since its infancy, when digital cameras were a far cry from the slim, sophisticated machines we see today. The bulky Kodak DC50 from 1996 is shown to the right. During this timeframe, the inventors worked at a company called PictureWorks. The inventors and PictureWorks recognized that once the digital camera phenomenon took off, consumers would need a quick and easy way to get digital pictures from their cameras onto their computers. PictureWorks' mission was born. They partnered with Kodak, Casio, Fuji, and others to provide image-transfer software that was bundled with digital cameras and scanners. Although their camera-to-computer software was successful, the inventors recognized that the next hurdle would be to share images with others over a network such as the Internet. At the time, image sharing proved challenging to most users. As a first example, the recipient of an image may expect or require a different form of image than that provided by the sender (e.g., the recipient may expect a .JPG file instead of a .BMP file, or she may expect an image with 640x480 resolution instead of 2048x1536 resolution). One or both parties may not have the technical expertise to reformat the images as required. As a second example, the process of sending an image (or, worse, dozens of images) across a network might be painfully slow if the images were not in an appropriate form beforehand. A 2048x1536 .BMP file might be over 3 megabytes, PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |4 2 whereas a 640x480 .JPG file might only be 60 kilobytes—1/50th the size, requiring 1/50th the time to transmit. As a third example, the recipient's image parameters might change over time, requiring the sender to re-prepare the images. The inventors witnessed these problems first hand in the real estate industry. Online realty listing services relied heavily on photos to interest other agents and their customers in properties. The listing services required these images to be in a certain form (e.g., to have a certain resolution and file format) to ensure that they were received and displayed correctly. Realtors therefore had to learn to use expensive image-editing software to modify their files to meet these specifications. Others would even mail in paper copies of the pictures and leave the digital imaging to someone else. To further complicate things, the image specifications were not consistent between listing services, so a Realtor often had to create and manually edit multiple copies of the same image in order to meet differing requirements. In short, electronically transmitting a properly formatted media file was not an easy process for most users in the mid-1990s. The inventors devoted their expertise to finding an elegant—yet simple—solution. The solutions the inventors ultimately patented allowed users to transmit properly formatted media with a few clicks, without using complex technologies or separate editing software. In the simplest form of the invention, users merely select a photo, optionally enter captions or text, and click "go." The patented technology takes care of the rest, properly formatting the media for the destination and typically reducing the size of the file that has to be transmitted. The patented ideas provide many benefits: submission of media by end users to web servers or other devices without the need for technical know-how; access by website partners to reliable media acquisition; access by PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |5 2 website partners to contributed media that consistently meets the recipient's specifications; faster transmission times; and increased ease-of-use that enhances the user experience. The inventors recognized that their solutions were valuable inventions, and they filed a patent application on July 21, 1999. The inventors knew their ideas could be embodied in multiple ways and worked to claim different embodiments in four related patents. First, the inventors prosecuted claims covering the use of their invention in the limited context of a web page. This claim set issued as U.S. Patent No. 6,895,557 patent (the "'557 Patent," exhibit PX-557) on May 17, 2005. On October 4, 2004, the inventors filed a continuation application. In this continuation, the inventors intentionally added and successfully prosecuted claims more broadly directed to processing media in and transmitting media from one "device" (e.g., a client device) to another "device" (e.g., a remote device or server device). This claim set, which is deliberately not limited to the web site/web page realm, issued as U.S. Patent No. 7,765,482 patent (the "'482 Patent, exhibit PX-482) on July 27, 2010. A second continuation later issued as U.S. Patent No. 8,612,515 patent (the "'515 Patent," exhibit PX-515) on December 17, 2013. Like the ʼ482 patent, it broadly claims ideas for processing and then transmitting media to other devices. The '094 Patent issued as the third continuation on July 5, 2016. Much like the '482 and '515 Patents, the '094 Patent broadly claims ideas for processing and then transmitting images to other devices and is not limited to the web site/web page realm. Lupercal and its predecessor companies licensed the patented technology to several companies. One of the first customers to do so was eBay, the online auction site. PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |6 2 Other customers include Cars.com, the Yellowpages.com, The New York Times, and the Dallas Morning News, among others. III. PRIOR CLAIM CONSTRUCTION ORDERS Claims issuing from the original patent application have been construed in two district court orders and an opinion by the Federal Circuit. See Summit 6 LLC v. Research in Motion Corp., 2012 U.S. Dist. LEXIS 186414 (N.D. Tex., May 21, 2012) (Exhibit A), Summit 6 LLC v. HTC Corp., 2015 U.S. Dist. LEXIS 179647 (N.D. Tex., Mar. 21, 2015) (Exhibit B), Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015) (Exhibit C). As noted in more detail below, the prior claim construction addressed and rejected many of the Defendant's proposed constructions and limitations. IV. DISPUTED TERMS There are five disputed terms. Defendant proposes several unwieldy constructions in an apparent, but misplaced, attempt to aid the jury. But "[c]laim 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 the determination of infringement." U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); see also Pisony, 2019 LEXIS 31524, at *16 (rejecting Defendants' construction where adopting the construction would not resolve any dispute over claim scope). This does not require "that the trial judge must repeat or restate every claim term in order to comply with the ruling that claim construction is for the court." U.S. Surgical Corp. at 1567-68 (holding, inter alia, district court properly refused to adopt claim construction that amounted to an "undisputed restatement of what these words mean"); see also Pisony, 2019 WL 928406, at *5. It is therefore appropriate for the Court to construe claim PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |7 2 terms according to their plain meaning when it has resolved any actual disputes raised by the parties. See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (holding that district court did not err in construing claim phrase according to its plain meaning because the court resolved the parties' dispute). Further, while the claims are read in light of the written description, it is improper to read unrecited limitations of a preferred embodiment into the claims. The Federal Circuit has marked this conduct as a "cardinal sin" of claim construction that has been "outright rejected" by the courts time and time again. See Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) ("[O]ne of the cardinal sins of patent law [is] reading a limitation from the written description into the claims."); GoLight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) ("[W]e have outright rejected the notion that disclosure of a single embodiment necessarily limits the claims."); see also SRI Int'l Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) ("If everything in the specification were required to be read into the claims, or if structural claims were to be limited to devices operated precisely as a specification-described embodiment is operated, there would be no need for claims."); Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment."). This is true even when the specification only describes a single embodiment. GoLight, 355 F.3d at 1331; Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (the Federal Circuit has "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."). PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |8 2 A. Term 1: "image submission tool" (Claims 30-32, 38, 43-44, 50) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and "web-based program capable of being ordinary meaning) integrated into a webpage and configured to perform a variable amount of intelligent preprocessing on media objects such as images prior to upload" This term needs no construction and is easily understood by reading the claims. As recited, the "image submission tool" is the software code, which is stored on a user's device, that performs the recited operations, including "pre-processing." Much like the previous cases, Defendant's proposed construction attempts to limit the claims to a preferred "web" embodiment described in the specification. See Exh. B, at *28-29. In those prior cases, the Court determined the claims were not limited to a preferred "web" embodiment and there was no clear and unmistakable disclaimer. Without such disclaiming language, Defendants' argument reduces to an improper attempt to limit the scope of the claims to the preferred embodiment. Likewise, in the previous Summit 6 action, the Court found that the invention's description "as a 'web-based' media submission tool' is not a 'clear and unmistakable disclaimer' of pre-processing that occurs outside of a browser. Id. (citing Exh. A, at *21). [T]he Court notes that: (1) the portions of the specification that discuss pre-processing within a browser relate to the preferred web site embodiment, and may not be grafted upon the claims as a whole; and (2) the applicants distinguished the Fredlund prior art on the basis of client-side processing, not processing within a browser. Furthermore, the Court finds that the applicants' description of the current invention PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |9 2 as a "web-based media submission tool" is not a "clear and unmistakable disclaimer" of pre-processing that occurs outside of a browser. Exh. A, at *21. For the same reasons the prior attempts to limit the claims to a preferred "web" embodiment were rejected, the Court should likewise reject Defendant's attempt to do so here. Defendant's proposed construction also adds the following unnecessary language: "and configured to perform a variable amount of intelligent preprocessing on media objects such as images prior to upload." This additional language is confusing and would be unhelpful to the jury. The claim language explicitly recites pre-processing an "image"– not "media objects." The claims also do not recite a "variable" amount of pre-processing. Further, the concept of "intelligent" vs "non-intelligent" preprocessing is not defined. The context of the claim is perfectly clear, the "image submission tool" is the claimed software that is stored on the user's device. Accordingly, no construction of this term is necessary. B. Term 2: "pre-process" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction "modifying the one or more images, as "modifying the one or more image files, as opposed to data merely associated with opposed to data merely associated with the one or more images, at the user device the image files, at the user device prior to prior to transmission to a remote device" transmission to a remote device" Lupercal's construction follows the construction of "pre-processing" as provided by Judge O'Connor with respect to related patents. Exh. B, at *22. (Determining "pro- processing" means "modifying the [media object data/digital content data/one or more image files, video files, or audio files], as opposed to data merely associated with the PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |10 2 [media object/digital content/image files, video files, audio files], as the client or local device prior to transmission to a remote device.") (brackets in original). The primary difference between the two proposed constructions is whether the claims are limited to modifying "image files" as opposed to an "image," which may not necessarily be stored as an image file. The claim language specifically recites "pre- processing the one or more images or the one or more replacement images…" PX-094 at 12:28-30. In the claims addressed in the previous claim construction order, the claims recited "image files" rather than simply "image." Hence, the court used "image files" in the construction. See PX-515 at 6:55-12:33 (reciting "image files," "video files," and "audio files" as the content being processed). Because the claims 30 and 42 are not limited specifically to "image files," the Defendant's proposed construction should be rejected. The second difference between the two proposed construction is whether multiple images processed. The claim language recites that "one or more" images or replacement images are pre-processed. Lupercal's proposed construction repeats the "one or more images" language to make clear that only one image needs to be processed. Defendant's proposed construction refers to "the images files" indicating there must be multiple image. Because the claim does not require multiple images, the Defendant's proposed construction should be rejected. C. Term 3: "pre-processing parameters" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction "values directing the pre-processing" "configurable values directing the preprocessing, as opposed to merely default values" PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |11 2 Lupercal proposes this term to be construed to mean "values directing the pre- processing," which is how it was previously construed. Exh. A, at *38. [T]he term[] "pre-processing parameters" and "parameter used to control the pre-processing" should be given the full breadth of their ordinary meaning as understood by a person of ordinary skill in the art at the time of the invention. As such, the Court finds that the "pre-processing parameters" and "parameters used to control the pre-processing" mean "values directing the pre-processing." Id. at 37-38. The parties in the HTC case also adopted this exact construction. Exh. B, at *26, fn. 8. Defendant improperly attempts to add two narrowing restrictions to the prior construction. First, the parameters must be "configurable." Second, the parameters cannot be a default value. The plain reading of the claim requires neither restriction. As recited, the pre-processing parameters are received from a separate device and the processing is controlled by the pre-processing parameters. PX-094 at 12:30-33. Nothing restricts the separate device from sending the same pre-processing parameters each time, such that the parameters may be considered a "default value." To the extent Defendant's are attempting to incorporate exemplary embodiments into the claims, the prior Court rejected such attempts. Exh. A, at *36-37. As discussed with regard to the "at the browser" limitation, the Curt finds that the written description, including its reference to the invention as a "web-based media submission tool," does not constitute a clear and unmistakable avowl of claim scope, so as to limit "pre-processing parameters" to an HTML context. Likewise, the Court finds that the reference to the use of HTML values in the written description is unavailing to Defendants because those descriptions appear only in the context of the preferred embodiment, not the invention as a whole. As such, the Court finds that the PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |12 2 ordinary meaning of "parameters" is broader than "values contained in HTML text," and the intrinsic evidence does not serve to limit the scope or definition of this term. Id. (citing Phillips v. AWH Corp., 415 F.3d at 1320) (emphasis added, and internal citations omitted). The Court should adopt the previous construction and reject Defendant's attempt to inject additional non-recited limitations into the ordinary meaning of this term. D. Term 4: "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and "pre-processing the one or more image ordinary meaning) files using the image submission tool to meet the pre-processing parameters specified by a receiving party, the pre- processing parameters being received by the image submission tool from a device other than the user device while the image submission tool performs a change of the one or more image files from one form to another" Upon construing the "pre-process" and "pre-processing parameters" terms, no further construction of this phrase is necessary because the remainder of this phrase is clear and understandable to a jury. Further, Defendant's proposed construction should be rejected for four reasons: PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |13 2 First, the proposed construction limits the pre-processing operation to "image files" rather than "images," as is explicitly recited. See supra IV.B. at 10 (discussing "image file" vs. "image.") Because the claims are not limited to processing image files, this aspect of Defendant's proposed construction should be rejected. Second, the claims recite the pre-processing parameters "control" the pre- processing. As Defendant's propose with respect to the construction of "pre-processing parameters," and as previously constructed, the pre-processing parameters "direct" (i.e., control) the processing operation. See supra IV.C at 11 (pre-processing parameters "direct" the pre-processing). Here, Defendants attempt to limit the scope of control to meeting some established value. The scope of the parameters and the control they have on the preprocessing or not so limited. For example, parameters can specify the following operations to be performed: resize the image, compress the image, change the file format, change the qualify of the image, crop the image, change the aspect ratio, add text or annotations, encode or combine images (e.g. stitch), enhance the image, and change the contrast or saturation. PX-094 at 4:60-5:2. For many of these operations, it is awkward at best to say that the pre-processing parameters were "met." Instead, the parameters direct the operation to be performed, which is how pre-processing parameters has been construed. Because the Claims are not restricted to "meeting" some pre-processed parameters, the Defendant's proposed claim construction should be rejected. Third, the claims have no restriction on when the image submission tool receives the pre-processing parameters. Defendant attempts to inject an unrecited temporal limitation into the claims wherein the pre-processing parameters must be received "while" the pre-processing is occurring. This argument was rejected by the Federal PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |14 2 Circuit. Specifically, the Federal Circuit considered the following claim phrase for Claim 38 of the '482 Patent: b. pre-processing said digital content at said client device in accordance with one or more preprocessing parameters, said one or more preprocessing parameters being provided to said client device from a device separate from said client device,. . . .; Exh. C at *11. (emphasis altered). The Federal Circuit rejected the argument that "being provided to" "requires that the pre-processing parameters are provided to the client device during operation of the claimed method." Id. at *16-17. We find that "being provided to" is not used as a verb in claim 38, but instead is a part of a phrase that conveys information about the "pre-processing parameters." In this claim, the pre- processing parameters are "being provided to" the client device from a second device. This is not a step in the claimed method. It is, instead, a phrase that characterizes the claimed pre-processing parameters. The use of the term "said" indicates that this portion of the claim limitation is a reference back to the previously claimed "pre-processing parameters." Id. at *12 (internal citation to claim 38 omitted). The present claims mirror this approach and recite the "pre-processing parameters [are] received from a device separate from the user device…" PX-094 at 12:31-33 and 14:11-12 (emphasis added). For the same reasons the Federal Circuit rejected the temporal limitation for the '482 Patent, the Court should reject Defendant's attempt to limit the present claims to receiving the pre- processing parameters "while" the pre-processing operation is occurring. Fourth, the Defendant's proposed construction should be rejected because it improperly attempts to restrict the type of pre-processing operations that can occur to those that change an image file "from one form to another." While altering the form of an PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |15 2 image would be a form of processing, the claims are not limited to this "form" of processing and the claims are not limited to processing "files." Because the claims are not limited to a particular subset of pre-processing operations that can be performed and are not limited to processing files, the Defendant's proposed construction should be rejected. E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" (Claim 30), "enabling a user to determine whether the first image should be replaced with a first replacement image" (Claim 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and Indefinite ordinary meaning) The Defendant asserts this term as being indefinite. It is not. The following is the context of the disputed term as it appears in the recited in the claims: [G]enerate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images. PX-094 at 12:21-24 (Claim 30) (emphasis added). [C]ausing the image submission tool to generate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images. Id. at 13:44-14:3 (Claim 42) (emphasis added). PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |16 2 This process of displaying images to the user to allow (enable) the user to determine if the images should be replaced is described the "Prepare and Post" embodiment of the '094 Patent: The Prepare and Post tools also support a batch interface, allowing a plurality of images to be submitted simultaneously as in the case of a professional photographer, for example. The opportunity for user confirmation is again provided, e.g., by displaying a visual representation of the images in the batch. If a mistake is made such that the wrong image is placed in a media object identifier, the correct image may be placed in the media object identifier. The correct image will replace the mistaken image. Alternatively, the user may remove an image from a media object identifier by right-clicking on the media object identifier and selecting Remove within a resulting pop-up menu. Id. at 4:4-13 (emphasis added). As described, by displaying the images to the user, the user is able to determine whether the images are satisfactory or need to be replaced. If they are satisfactory, the user is able to confirm the images should be used. If they are not satisfactory, the user is able to replace the images. There is nothing indefinite with this phrase. V. CONCLUSION For these reasons, Lupercal respectfully requests the Court construe the disputed claim terms in accordance with Lupercal's proposed constructions. Dated: November 15, 2019 Respectfully submitted, Raymond W. Mort, III PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |17 2 Texas State Bar No. 00791308 raymort@austinlaw.com THE MORT LAW FIRM, PLLC 100 Congress Ave, Suite 2000 Austin, Texas 78701 Tel/Fax: (512) 865-7950 ATTORNEYS FOR PLAINTIFF PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF PAGE |18