Lupercal LLC v. CitiBank, N.A.

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

BRIEF by Plains Capital Bank.

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0 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Plaintiff Case No. 6:19-cv-00201-ADA v. LEAD CASE CITIBANK, N.A., Defendant LUPERCAL LLC, Case No. 6:19-cv-00202-ADA Plaintiff JURY TRIAL DEMANDED v. PLAINS CAPITAL BANK, Defendant DEFENDANT PLAINSCAPITAL BANK'S OPENING CLAIM CONSTRUCTION BRIEF 0 Table of Contents I. Introduction ......................................................................................................................... 1 II. The '094 Patent ................................................................................................................... 2 III. Claim Construction Principles ............................................................................................ 4 IV. Indefiniteness Determination .............................................................................................. 6 V. Person of Ordinary Skill in the Art ..................................................................................... 7 VI. Previous Constructions of the Related Patents ................................................................... 7 VII. Claim Construction of the Disputed Terms ........................................................................ 8 A. The Court Should Construe All Disputed Terms .................................................... 8 B. Term 1: "image submission tool" ........................................................................... 8 "Web-based" is a requirement of the "image submission tool" ................. 9 "Capable of being integrated into a webpage" is a requirement of the "image submission tool" ..................................................................... 11 "Capable of being … configured to perform a variable amount of intelligent pre-processing on media objects prior to upload" is a requirement of the "image submission tool" ............................................ 14 C. Term 2: "pre-process" ........................................................................................... 15 PlainsCapital's construction is supported by the intrinsic record ............. 16 The prosecution history of related patents confirms that pre- processing is performed on digital image files ......................................... 17 Additional evidence supports PlainsCapital's construction ...................... 18 D. Term 3: "pre-processing parameters" ................................................................... 19 E. 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" ............... 22 Pre-processing is performed using the image submission tool to meet the pre-processing parameters specified by a receiving party ......... 23 Pre-processing parameters are received by the image submission i 0 tool from a device other than the user device during a change of the one or more image files from one form to another ............................. 24 VIII. Indefinite Claim Term....................................................................................................... 28 A. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" ................................. 28 IX. CONCLUSION ................................................................................................................. 30 ii 0 Table of Authorities Page(s) Cases Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) (en banc)............................................................................5, 26 ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003)................................................................................................26 Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007)......................................................................................5, 15, 21 Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017)................................................................................................18 Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372 (Fed. Cir. 2005)..................................................................................................6 Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)..................................................................................6, 7, 29, 30 Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed. Cir. 1998)..........................................................................................14, 18 E.I. du Pont de Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060 (Fed. Cir. 2019)..................................................................................................7 Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928 (Fed. Cir. 2019)....................................................................................................9 GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014)..................................................................................................4 Good Tech. Corp. v. Little Red Wagon Techs., Inc., No. 3:11-cv-02373-M, 2013 U.S. Dist. LEXIS 112946 (N.D. Tex. Aug. 11, 2013) ...........................................................................................................................6 Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014)..................................................................................................4 Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369 (Fed. Cir. 1999)................................................................................................26 Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948 (Fed. Cir. 1993)......................................................................................................26 iii 0 Hologic, Inc. v. SenoRx, Inc., 639 F.3d 1329 (Fed. Cir. 2011)................................................................................................10 Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006)................................................................................................15 Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006)..........................................................................5, 12, 14, 15, 21 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014)................................................................................................29 Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008)................................................................................................26 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ...................................................................................................................4 In re Musgrave, 431 F.2d 882 (C.C.P.A. 1970) ...................................................................................................6 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) ...................................................................................................................6 Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353 (Fed. Cir. 2005)..................................................................................................8 O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................8 Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307 (Fed. Cir. 2007)................................................................................................13 Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344 (Fed. Cir. 2017)................................................................................................25 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)........................................................................ passim Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131 (Fed. Cir. 2016)................................................................................................10 Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375 (Fed. Cir. 2016)..........................................................................................10, 12 Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296 (Fed. Cir. 2011)..................................................................................................6 iv 0 SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262 (Fed. Cir. 2007)......................................................................................5, 12, 21 Saffran v. Johnson & Johnson, 712 F.3d 549 (Fed. Cir. 2013)........................................................................................5, 15, 21 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001)................................................................................................15 SRAM Corp. v. AD-II Eng'g, Inc., 465 F.3d 1351 (Fed. Cir. 2006)................................................................................................26 Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O, 2015 U.S. Dist. LEXIS 179647 (N.D. Tex. Mar. 21, 2015)..........................................................................................................7, 16, 19, 25 Summit 6 LLC v. Research in Motion Corp., No. 3:11-cv-367-O, 2012 U.S. Dist. LEXIS 186414 (N.D. Tex. May 21, 2012) ..........................................................................................................7, 16, 19, 22 UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816 (Fed. Cir. 2016)..............................................................................................5, 13 Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007)................................................................................................15 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)................................................................................................4, 6 Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795 (Fed. Cir. 1999)....................................................................................................7 Statutes 35 U.S.C. § 112 ..............................................................................................................................26 v 0 Table of Exhibits Ex. PC01 U.S. Patent No. 9,386,094 to Wood et al. ("the '094 patent") Ex. PC02 Amendment and Response to Office Action, U.S. Patent Appl. No. 09/357,836 (Mar. 22, 2002) Ex. PC03 Interview Summary, U.S. Patent Appl. No. 09/357,836 (Feb. 27, 2003) Ex. PC04 Amendment to Office Action Under 37 C.F.R. § 1.111, U.S. Patent Appl. No. 09/357,836 (Mar. 11, 2003) Ex. PC05 New Application, U.S. Patent Appl. No. 09/357,836 (July 21, 1999) Ex. PC06 Amendment, U.S. Patent Appl. No. 10/961,720 (Mar. 26, 2010) Ex. PC07 Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00807, Paper 23 (Dec. 9, 2015) Ex. PC08 Patent Owner's Response Under 37 C.F.R. § 42.120, Google Inc. v. Summit 6 LLC, IPR2015-00806, Paper 28 (Dec. 9, 2015) Ex. PC09 Declaration of Dr. Martin Kaliski, Google Inc. v. Summit 6 LLC, IPR2015-00806 and -00807, Exhibit 2058 (Dec. 9, 2015) ("Kaliski Decl.") Ex. PC10 Amendment, U.S. Patent Appl. No 12/831,503 (Feb. 20, 2017) Ex. PC11 Amendment, U.S. Patent Appl. No 12/831,503 (Dec. 7, 2015) Ex. PC12 Final Office Action, U.S. Patent Appl. No 12/831,503 (Feb. 29, 2016) Ex. PC13 Non-final Office Action, U.S. Patent Appl. No 12/831,503 (Mar. 14, 2018) Ex. PC14 Notice of Abandonment, U.S. Patent Appl. No 12/831,503 (Oct. 19, 2018) Ex. PC15 Oxford Dictionary of Computing at 235 ["image processing"] (4th ed. 1996) Ex. PC16 Oxford Dictionary of Computing at 8 ["Active X"] (5th ed. 2004) Ex. PC17 Microsoft Computer Dictionary at 15 ["ActiveX"], 112 ["conversion"], 252 ["Java applet"], 253 ["JavaScript"], 473 ["Visual Basic Script"] (4th ed. 1999) Ex. PC18 McGraw-Hill Computer Desktop Encyclopedia at 10 ["ActiveX"], 10-11 ["ActiveX control"], 510 ["Java applet"] (9th ed. 2001) Ex. PC19 Freedman Computer Desktop Encyclopedia at 442 ["image processing"] (2d ed. 1999) vi 0 Ex. PC20 Merriam-Webster's Collegiate Dictionary at 253 ["conversion"/"convert"] (10th ed. 2000) Ex. PC21 Preliminary Amendment, U.S. Patent Appl. No. 10/961,720 (Oct. 8, 2004) Ex. PC22 Email from Ray Mort, Counsel for Lupercal, to Kevin Rodkey, Counsel for PlainsCapital Bank (November 13, 2019, 11:12 AM EST) Ex. PC23 Declaration of Stephen Gray ("Gray Decl.") All emphases in this brief are added unless otherwise noted. vii 0 I. INTRODUCTION U.S. Patent No. 9,386,094 ("the '094 patent") describes its "present invention" as "an improved web-based media submission tool." The parties disagree over the proper construction of four claim terms, as well as whether a fifth term renders the claims indefinite. The '094 patent specification focuses entirely on purported solutions to problems with existing "web-based media submission tools," and it repeatedly characterizes features of its "web- based media submission tool" as "required," "key," and "important" while distinguishing prior art. PlainsCapital Bank ("PlainsCapital") proposes a construction of "image submission tool" consistent with the '094 patent's "invention"—a "web-based media submission tool"—while Lupercal LLC ("Lupercal") asserts that this term requires no construction. Lupercal thus ignores the substantial body of Federal Circuit law that requires adoption of the inventor's disavowals and choices in lexicography. The '094 patent comes from a family of patents that have been the subject of lawsuits and successful unpatentability challenges in the U.S. Patent and Trademark Office ("USPTO"). Those matters, as well as the specification and prosecution histories of related patents, inform the proper construction of two of the four disputed terms: "pre-process" and "pre-processing parameters." Lupercal's proposed constructions, however, fail to resolve disputes specific to this case. The parties also disagree as to the meaning of the phrase: "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." PlainsCapital believes a jury would benefit from a clearer exposition of the phrase because, as is often the case for patent claims, this phrase is convoluted and complex to decipher. Additionally, PlainsCapital submits that "received … in a conversion …" requires receipt of the pre-processing parameters "during a change of the 1 0 one or more images or the one or more replacement images." The preposition "in" is used in the disputed phrase in a temporal sense as opposed to spatial because the claim, as a whole as well as the disputed phrase, describes operations (specifically "receiving … in a conversion") performed by a computer using software. Lupercal, on the other hand, ignores this requirement. Lastly, the phrase "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" is indefinite because it requires a subjective determination—that is, different users may have different opinions as to whether the image "should be" replaced. The claim requires the user to make this determination, and it lacks any objective criteria. Accordingly, claims 30 and 42 as well as their dependent claims are invalid. II. THE '094 PATENT The '094 patent purportedly addresses problems associated with sharing images on the Internet. According to the '094 patent, preexisting solutions such as File Transfer Protocol ("FTP") programs required a "daunting" multi-step process and "a level of sophistication that is beyond that of the ordinary user," also referred to as an "imaging civilian." '094, 1:26-40 (Ex. PC01). But a "broad-based solution," according to the '094 patent, "requires a web-based media submission tool that allows for submission of media objects in a convenient, intuitive manner." '094, 1:52-54. According to the '094 patent, ActiveUpload, a prior art system, allowed "an arbitrary file to be dragged and dropped onto a web page control for upload to the web server." '094, 1:54-58. It also allowed "users to, without leaving a web page, transfer files to a server … by selecting the files on the user's desktop that the user wants to transfer, then dragging them onto the web page." '094, 1:59-62. And by integrating ActiveUpload into web pages, web site creators could "change the behavior of the control" so a user can visit a web page and "contribute pictures, documents, zip files, etc., without having to leave the web page and use an FTP program." '094, 1:62-67. 2 0 But ActiveUpload purportedly did not "automat[e] … the handling and distribution of media objects" on the back end. '094, 2:1-6. Nor did it have "built in 'intelligence' to streamline the process of handling and transporting rich media objects from the front end." Id. To address this alleged need, the '094 patent's "present invention" "provides an improved web-based media submission tool." '094, 1:46-54, 2:24-25. The "web-based media submission tool" invention includes, according to the '094 patent, the following "unique and valuable functions" ('094, 2:28-29): (1) provides "an opportunity to confirm the submission with a visual representation" ('094, 2:29-32; see also id. at 3:48-51, 4:1-6, 4:49-55); (2) "allow[s] a user to drag and drop or select" media objects for "batch submission" ('094, 2:32-34; see also id. at 4:1-6); (3) provides for "[s]ubmission from a web page to a web page" ('094, 2:34-35); (4) enables the "submission of [ancillary] information" ('094, 2:39-46; see also id. at 4:32- 48); and (5) "[e]ven more importantly, … is configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload" ('094, 2:35-38; see also id. at 4:55-59). The '094 patent stresses that "an improved web-based media submission tool" must possess certain "unique and valuable functions" that are "[u]like existing tools" discussed above. '094, 2:24-29. It further emphasizes—"[e]ven more importantly"—that the "improved web-based media submission tool" should be "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094, 2:24-25, 2:35-38 Client-side intelligence is a "key differentiator" of the image submission tool. '094, 2:35-38, 4:49-50. The '094 patent's web-based media submission tool is called "Prepare and Post™." It consists of "browser-side 3 0 components" that "prepare[] and submit[] media objects from inside a standard browser" for transport "over the web." '094, 2:47-50, 2:55-57. This key differentiator provides for the built-in intelligence the prior-art media submission tool lacked to "streamline the process of handling and transporting rich media objects from the front end." '094, 2:1-6. Moreover, the '094 patent's "present media submission tool" "facilitate[s] automatic server-side integration of media content" ('094, 6:45-50) by integrating the web-based image submission tool into the web pages to solve the back-end problem of distributing digital contents. '094, 2:1-6. III. CLAIM CONSTRUCTION PRINCIPLES Claim construction is a question of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 387 (1996). Claim terms "are generally given their ordinary and customary meaning," which "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (citation omitted). Claim construction considers "the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314. "[T]he specification 'is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Courts recognize that the specification often limits the scope of claim terms in two instances: (1) lexicography, when an applicant defines a term or consistently uses a term in a specific way; and (2) disclaimer, when the applicant explains how a term distinguishes the claimed invention from prior art. GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371-72 (Fed. Cir. 2014). 4 0 When a patent describes certain features as its "invention" or the "present invention," such descriptions often limit the scope of the claims regardless of whether those features are expressly recited in the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288-89 (Fed. Cir. 2009) (en banc). And when the specification characterizes features using words like "require," "key," or "important," courts regularly respect the applicant's choices in expressing the metes and bounds of the invention and limit the scope of disputed claim terms to such. See, e.g., Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007) (finding disclaimer where the specification described that an element is "require[d]"); SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269-70 (Fed. Cir. 2007) (finding disclaimer when the specification characterized an operation as "an important feature" of the present invention (emphasis in original) (citation omitted)); Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1354-55 (Fed. Cir. 2006) (finding disclaimer when the specification described a feature as a "very important feature … in an aspect of the present invention" and disparaged alternatives to that feature (citation omitted)); Saffran v. Johnson & Johnson, 712 F.3d 549, 560 (Fed. Cir. 2013) (finding disclaimer when the specification emphasized "macromolecular containment as a key feature of the invention"). Those types of statements "are not descriptions of particular embodiments, but are characterizations directed to the invention as a whole" and "serve to limit the scope of the applicants' claimed subject matter." Andersen, 474 F.3d at 1367-69. Although claims are not always limited to the disclosed embodiments, Phillips, 415 F.3d at 1323, when every described embodiment includes a specific feature, that feature cannot be ignored, and the scope of the claims must include that feature. UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 823-24 (Fed. Cir. 2016) (affirming construction of "handheld device" to a "direct-pointing device" because of "the repeated description of the invention as a 5 0 direct-pointing system, the repeated extolling of the virtues of direct pointing, and the repeated criticism of indirect pointing"). "[T]he patentee's choice of preferred embodiments can shed light on the intended scope of the claims." Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1377- 1379 (Fed. Cir. 2005) ("Because the specification makes clear that the invention involves a two- stage interrupt mode, the intrinsic evidence binds Boss to a narrower definition of 'interrupt' than the extrinsic evidence might support."). Thus, in construing the claims, the goal is "to capture the scope of the actual invention, rather than … allow the claim language to become divorced from what the specification conveys is the invention." Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). The prosecution history is also relevant to the extent it "demonstrat[es] how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution." Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83); Good Tech. Corp. v. Little Red Wagon Techs., Inc., No. 3:11-cv-02373-M, 2013 U.S. Dist. LEXIS 112946, at *8 (N.D. Tex. Aug. 11, 2013). And the Court may consider extrinsic evidence such as expert testimony and dictionaries to determine the meaning of a term in the pertinent field. Phillips, 415 F.3d at 1317-18. IV. INDEFINITENESS DETERMINATION "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). A definite claim requires an "objective anchor." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-51 (Fed. Cir. 2005) (citing In re Musgrave, 431 F.2d 882, 893 (C.C.P.A. 1970)), abrogated on other grounds by Nautilus, 572 U.S. 898. A claim 6 0 is indefinite if understanding the scope of a term requires a highly subjective inquiry "depend[ing] on the unpredictable vagaries of any one person's opinion." Id. V. PERSON OF ORDINARY SKILL IN THE ART Claim construction requires consideration of the asserted claims from the viewpoint of a person of ordinary skill in the art ("POSITA"). Phillips, 415 F.3d at 1313. PlainsCapital submits that a POSITA for the '094 patent would have at least an undergraduate degree in electrical engineering, computer engineering, or computer science (or similar degree) and at least two years of work experience designing or implementing software applications involving data transfer over networks. Gray Decl. ¶ 29 (Ex. PC23). Work experience would substitute for formal education, and additional formal education, such as graduate studies, could substitute for work experience. Gray Decl. ¶ 29. VI. PREVIOUS CONSTRUCTIONS OF THE RELATED PATENTS Courts previously construed several claim terms of patents related to the '094 patent. 1 0F See, e.g., Summit 6 LLC v. Research in Motion Corp., No. 3:11-cv-367-O, 2012 U.S. Dist. LEXIS 186414 (N.D. Tex. May 21, 2012) ("Research in Motion"); Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O, 2015 U.S. Dist. LEXIS 179647 (N.D. Tex. Mar. 21, 2015) ("HTC"). Familial patents are typically treated as intrinsic evidence when they contain "common subject matter" with the terms at issue. E.I. du Pont de Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1070 (Fed. Cir. 2019). 1 Although those courts previously construed terms not presented here, PlainsCapital does not currently believe construction of those terms is necessary to resolve disputes in this case. Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ("[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy."). 7 0 VII. CLAIM CONSTRUCTION OF THE DISPUTED TERMS A. The Court Should Construe All Disputed Terms Lupercal's insistence on plain meaning for terms 1 and 4 is wrong because, here, "reliance on a term's 'ordinary' meaning does not resolve the parties' dispute" of claim scope. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Lupercal initially asserted that no disputed terms needed construction. By email on November 13, 2019, however, Lupercal proposed constructions for terms 2 and 3, as discussed below. Ex. PC22. B. Term 1: "image submission tool" Terms and Claims PlainsCapital's Lupercal's Construction Construction "image submission tool" "web-based program capable No construction of this term of being integrated into a is required. This term has its Claims 30, 31, 32, 38, 42, 43, webpage and configured to plain and ordinary meaning 44, 50 perform a variable amount of as understood by a person of intelligent pre-processing on ordinary skill in the art. media objects prior to upload" "Image submission tool" appears in independent claims 30 and 42 and dependent claims 31, 32, 38, 43, 44, and 50. It has no plain and ordinary meaning; rather, it is a term coined by the applicants in their specification2 and claims. Gray Decl. ¶ 45. "Image submission tool" also does 1F not have specialized meaning attributed to it in any general or computer dictionaries that Defendant is aware of. To the extent Lupercal argues that the term's meaning is merely the combination of individual dictionary definitions of "image," "submission," and "tool," the Federal Circuit has rejected similar arguments. Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1359-60 (Fed. Cir. 2005) (rejecting plaintiff's proposed construction that term "download 2 The phrase "image submission tool" appears only in the claims, whereas the specification explains that an "image[]" is one form of "media" ('094, 2:50-51) as compared to other forms ('094, 1:41-46). Gray Decl. ¶ 46. 8 0 component" is the combination of the individual dictionary definitions of "download" and "component"). Instead, the '094 patent defines the metes and bounds of "image submission tool" in the specification to distinguish the patent's purported contribution over prior-art web-based applications known to them at the time. '094, 1:18-21, 2:1-6. "Web-based" is a requirement of the "image submission tool" The '094 patent unambiguously states that "[a] broad-based solution" to the alleged problems with the prior art "requires a web-based media submission tool that allows for submission of media objects in a convenient, intuitive manner." '094, 1:52-54. The patent also explains that the "present invention" is "an improved web-based media submission tool." '094, 2:24-25. Because the patent states that "web-based" is a "required" feature, it unmistakably disavows any media submission tool that is not "web-based." Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 933 (Fed. Cir. 2019) ("When a patent … describes the features of the 'present invention' as a whole, this description limits the scope of the invention." (citation omitted)). The specification confirms its "invention" is a "web-based" program by including the "web-based" requirement in every disclosed embodiment. See, e.g., '094, 2:24-46, 2:47-57, 3:18- 51, 3:58-60, 5:10-25. The '094 patent states that the "Prepare and Post™ tool[]" is a "browser- side component[]" that operates "from inside a standard browser" to provide "the ability to submit and transport media objects over the web." '094, 2:47-59. All of the disclosed embodiments of "browser-side components" are web-based. In one embodiment, the Prepare and Post tool is an ActiveX component or an ActiveX control. '094, 3:30-33, 6:35-42. In another embodiment, the Prepare and Post tool is based on Java, such as Java applets or JavaScript. '094, 3:48-51, 6:35-42, Appendix A. The patent also provides an example based on VBScript in Fig. 4B. '094, Fig. 4B. 9 0 These are all web-based programming languages that enable the "key differentiator" of "client- side intelligence built into the tools." '094, 4:49-50; Gray Decl. ¶¶ 53, 61. The Federal Circuit has repeatedly held that in situations like this, where the patent consistently describes every embodiment as having a particular feature, it is proper for a court to limit the scope of the claims to the disclosed feature. See, e.g., Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1137 (Fed. Cir. 2016) (court properly limited claim to inwardly extended short seals when "[e]very embodiment described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals"); Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1380-81 (Fed. Cir. 2016) (upholding construction of "mountable" as "having a feature for mounting" because every embodiment disclosed in the specification included a "mounting" feature and plaintiff was unable "to pinpoint in the intrinsic record where the patent contemplates a situation where no mounting features exist" (emphasis in original)); Hologic, Inc. v. SenoRx, Inc., 639 F.3d 1329, 1335-38 (Fed. Cir. 2011) (district court erred by not limiting claimed "asymmetrically located" as it related to the radiation source to be asymmetric with respect to a longitudinal axis, which was how the specification and patent figures showed every embodiment of the invention). Thus, the '094 patent requires the "image submission tool" to be a "web-based" program. a) Extrinsic evidence supports "web-based" as a requirement of the "image submission tool" Extrinsic evidence supports that the image submission tool must be a web-based program. A POSITA would have known that all disclosed embodiments, ActiveX, Java applets or JavaScript, and VBScript are web-based programs. Gray Decl. ¶ 53. For example, ActiveX is a "technology developed by *Microsoft for embedding executable code into *Web pages." Ex. PC16 at 8. It "is used primarily to develop interactive content for the World Wide Web" and 10 0 "can be embedded in Web pages to produce animation and other multimedia effects, interactive objects, and sophisticated applications." Ex. PC17 at 15. ActiveX "turn[s] Web pages into software pages that can perform just like any program that is launched from a server." Ex. PC18 at 10-11. A Java applet is a "Java program that is downloaded from the server and run from the browser." Ex. PC18 at 510; Ex. PC17 at 252 ("Java applets can be downloaded and run by any Web browser capable of interpreting Java …."). JavaScript is a light-weight, text-based piece of code that is placed in line with standard web page code. Ex. PC17 at 253 (defining JavaScript as "a scripting language" that is "included in a Web page along with the HTML code" and used to add online application and functions to web pages). JavaScript is used to tie Java applets together. And VBScript is a programming language "optimized for Web-related programming" and "is embedded in HTML documents." Ex. PC17 at 473. As such, ActiveX, Java, JavaScript, and VBScript are all web-based programs. Gray Decl. ¶¶ 53-56. Because these dictionaries place all of the embodiments in a "web-based" context, a POSITA would understand that the '094 patent's image submission tool must be a web-based program. Gray Decl. ¶ 57. "Capable of being integrated into a webpage" is a requirement of the "image submission tool" The "image submission tool" must also be capable of being integrated into a web page. Gray Decl. ¶ 58. The '094 patent states that the "present invention" is "an improved web-based media submission tool" that provides for "[s]ubmission from a web page to a web page." '094, 2:24-35. The submission of digital content from a web page to another web page is a key feature of the patent's invention. The submission from a first web page to a second web page refers to the transmission of digital content from a first location (i.e., from the user's machine) to a second location (i.e., a server). '094, 2:47-50, 6:31-34. This is achieved by using web-based programs that are capable of being integrated into a customer's web page, which is then operated by a user 11 0 via "a … browser." '094, 2:47-57, 5:10-25. The patent proclaims that the "key differentiator" of these "browser-side components" (i.e., web-based programs) is the client-side "browser," which provides all of the client-side intelligence built into the web-based programs. '094, 2:55-57, 4:49- 50. SafeTCare Mfg., 497 F.3d at 1269-70; Inpro II Licensing, 450 F.3d at 1354-55. Consistent with the identification of the "present invention," all embodiments describe the Prepare and Post tool as being "integrated into web sites (customers) to allow[] those sites to accept media objects from web site visitors (users)." '094, 5:11-14. As discussed above, all of the embodiments use a web-based program that is specifically designed to be embedded into a web page. See supra Section VII.B.1. The '094 patent's only "complete working example" consists of JavaScript code snippets that are copied and "paste[d]" into the web page. '094, 5:14-28; see also id. at 5:10-11, Appendix A. The '094 patent explains, "All media object identifiers on a web page must be contained within an HTML form." '094, 6:9-10. The media object identifier is one of the "primary components" of the image submission tool for "provid[ing] a graphical interface for placing and associating a media object from a user's desktop onto a web page." '094, 3:15-20. Any place on the web page where the "media object identifier is desired," a "single line of JavaScript code is inserted into the web page (within the HTML form)." '094, 6:10-14. Because every embodiment disclosed in the specification describes the "image submission tool" as integrated into a web page, and because the '094 patent does not contemplate a situation where no integration exists, "image submission tool" should be construed to include "capable of being integrated into a webpage." Profectus Tech., 823 F.3d at 1380-81. Moreover, the '094 patent criticizes prior-art media submission tools as lacking back-end automation in the handling and distribution of media objects. '094, 2:1-6. Because the "web page 12 0 integration" of the patent's "present media submission tool" "facilitate[s] automatic server-side integration of media content" ('094, 6:45-50), integrating the web-based program into the web pages solves the back-end problem of distributing digital contents and provides a "required" feature of the "present invention" and a "key differentiator" from prior-art systems. Gray Decl. ¶ 66. As such, the "web page integration" feature cannot be ignored and dictates limiting the scope of the patent's image submission tool as a web-based program that is capable of being integrated into a web page. UltimatePointer, 816 F.3d at 823-24. a) The prosecution history confirms the "image submission tool" must be "capable of being integrated into a webpage" During the prosecution of the related patents, the applicants repeatedly stated that the invention is a program capable of being integrated into a web page. For example, during the prosecution of the original parent U.S. Patent Appl. No. 09/357,836 ("the '836 application"), the applicants argued that the "media object identifier system of the present invention," which is the graphical interface of the image submission tool, provided "great commercial success" because of its ability to be incorporated into "[m]any existing websites including Ebay.com and Realtor.com." Ex. PC02 at 5. The applicants further argued that "the present invention embeds objects in web sites that enable client-side pre-processing." Ex. PC03 at 1. And the applicants, in response to a § 112, ¶ 1, rejection in the '836 application, stated that "[t]o include a media object identifier on a customer web page, the customer can cut and paste code snippets for these sections into a web page," and that "cutting and pasting the code of Appendix A into code for a third party web site will embed a media object identifier onto the web site." Ex. PC04 at 17-18. These statements from prosecution of a familial patent relating to the same subject matter are relevant in construing the claims at issue. Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (finding prosecution history of parent relevant in construing claims of four child patents 13 0 that involved the same content). Here, the '836 application shares the same specification as the '094 patent. Thus, these global statements limit the image submission tool to a program capable of being integrated into a web page. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998) (finding that the public has a right to rely on such definitive global comments made during prosecution). "Capable of being … configured to perform a variable amount of intelligent pre-processing on media objects prior to upload" is a requirement of the "image submission tool" The '094 patent identifies a "key" feature of the invention as the image submission tool's capability "to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094, 2:35-38, 4:49-50. This "client-side intelligence" performing "a variable amount of intelligent preprocessing" is a "key differentiator" that is "[e]ven more important[]" than the other features of the invention. '094, 4:49-50, 2:35-38. The patent explains that the "Prepare and Post components require[] … a Configuration Section." '094, 5:18-22. "The Configuration Section overrides various configurable default settings that the customer can control." '094, 5:29-33. This pre-processing applies "equally to media objects of all descriptions." '094, 2:51-54. Thus, all of the embodiments are configured to perform a variable amount of intelligent pre-processing prior to upload. Figures 1 and 2 even demonstrate a web page with the capability of being configured by the user to perform a variable amount of intelligent pre-processing on media objects prior to upload—specifically, during operation, the user can add a variable number of photos and even build a "SurroundView." Gray Decl. ¶ 72. Moreover, the patent disparages prior-art submission tools as having "no built in 'intelligence,'" confirming that variable pre-processing is required. '094, 2:1-6; Inpro II Licensing, 450 F.3d at 1354-55. By applying the variable amount of intelligent pre-processing to all embodiments and characterizing the feature as the "key differentiator" and "important[]" to 14 0 the present invention, the applicant limited the scope of the term "image submission tool" to tools that provide a variable amount of pre-processing. Inpro II Licensing, 450 F.3d at 1354-55; Saffran, 712 F.3d at 560. Because the '094 patent describes these features as part of the "present invention," the claims require a "web-based program capable of being … configured to perform a variable amount of intelligent pre-processing on media objects prior to upload." Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) ("[T]he characterization of the coaxial configuration as part of the 'present invention' is strong evidence that the claims should not be read to encompass the opposite structure."); see also Andersen, 474 F.3d at 1367-68 (specification's description of a "critical element" found limiting). C. Term 2: "pre-process" Terms and Claims PlainsCapital's Lupercal's Construction Construction "pre-process" "modifying the one or more "modifying the one or more image files, as opposed to images, as opposed to data Claims 30, 42 data merely associated with merely associated with the the image files, at the user one or more images, at the device prior to transmission user device prior to to a remote device" transmission to a remote device" In two prior cases, the term "pre-process" was construed to mean (1) "modifying the [media object data/digital content data], as opposed to data merely associated with the [media object/digital content], at the client or local device in preparation for transmission to a remote device" and (2) "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 [media object/digital 15 0 content/image files, video files, audio files], at the client or local device prior to transmission to a remote device." See, e.g., Research in Motion, 2012 U.S. Dist. LEXIS 186414, at *31; HTC, 2015 U.S. Dist. LEXIS 179647, at *22 (alterations in original). In the first case, the patent owner "agree[d] that pre-processing involves modification of the material being pre-processed and that pre-processing occurs prior to transmission of the pre- processed material." Research in Motion, 2012 U.S. Dist. LEXIS 186414, at *11-12. The parties disputed "what material is pre-processed," and the court found "it would be helpful to the jury to clarify that the material subject to pre-processing does not include data merely associated with the media object or digital content." Id. at *14-16. In the second case, the patent owner "argue[d] that the Court should adopt substantially the same construction of the 'pre-processing' term as in the previous Summit 6 case," changing only certain "bracketed portion[s]" of the construction. HTC, 2015 U.S. Dist. LEXIS 179647, at *11 & n.3. PlainsCapital's construction is supported by the intrinsic record The term "pre-process" is recited in independent claims 30 and 42. '094, 12:28, 14:7. "Pre-processing" involves the modification of material. Gray Decl. ¶ 79. As courts have recognized before, "the material subject to pre-processing does not include data merely associated with the media object or digital content." Research in Motion, 2012 U.S. Dist. LEXIS 186414, at *15-16. The '094 patent explains that pre-processing includes various types of modification of the file itself stored in memory, such as resizing (or compressing), changing the file format, cropping (or changing the aspect ratio), adding text or annotation, converting (or encoding), changing orientation, combining (or stitching), or enhancing. '094, 4:59-5:3. The original claims in the parent '836 application list ten different ways of pre-processing a media object prior to transportation to the second location: (1) "Reducing the size of the media object;" 16 0 (2) "Compressing the media object for purposes of transportation;" (3) "Changing the file format of the media object;" (4) "Changing the aspect ratio or otherwise cropping the media object;" (5) "Adding text or other annotation to the media object;" (6) "Encoding or otherwise converting the media object;" (7) "Processing the media object in a manner that completely fills the media object identifier or maintains the aspect ratio of the media object within the media object identifier;" (8) "Changing the orientation or otherwise rotating the media object;" (9) "Combining (including stitching) of multiple media objects;" or (10) "Enhancing the image by changing its contrast or saturation values." Ex. PC05 at 15-16 (emphases in original omitted). Gray Decl. ¶ 81. Here, the material subject to pre-processing is the image file itself stored on the user device, as opposed to other data associated with the image files. Gray Decl. ¶ 82. Digital image files are modified after they have been captured via digital cameras and scanners and saved onto the user device. Gray Decl. ¶¶ 82-83; see also '094, 1:25-26. In all of the disclosed embodiments, the image to be modified is a digital image file stored locally on the user device. For example, the user may "drag and drop" the existing image file or "browse a directory to select" the existing image file. '094, 2:25-27, 3:23-51. Thus, "pre-processing" or "pre-process" means modifying the one or more image files, not the raw digital image data or physical images. Gray Decl. ¶ 84. The prosecution history of related patents confirms that pre- processing is performed on digital image files The familial prosecution histories confirm that pre-processing is performed on digital image files, not raw digital image data or other data associated with the image files. For example, during prosecution of the parent U.S. Patent No. 7,765,482, the applicant distinguished the prior art Hui reference because the prior art "processes information associated with digital content," which does not constitute "pre-process[ing] the digital content." Ex. PC06 at 22. In an inter partes review of the parent U.S. Patent No. 8,612,515, the patent owner distinguished the prior art 17 0 Creamer reference because it manipulated "a raw image" rather than "modifying an existing image that has already been saved in a storage media. … Because Creamer compresses raw image data, not identified image files …, Creamer does not teach or disclose pre-processing identified files." Ex. PC07 at 29-30. In particular, the patent owner likened the claimed "pre-processing" to "modifying an existing image that has already been saved in a storage media" and distinguished it from saving a raw image "during an image capture process." Id. at 29. Similarly, the patent owner, in an inter partes review of the parent '482 patent, distinguished the same prior-art Creamer reference because it "describes a digital camera that processes raw image data …, not a camera that processes captured images." Ex. PC08 at 15, 31-32; see also Ex. PC07 at 9, 13, 30. Moreover, the patent owner's expert confirmed that the "manipulation of raw image data is not pre- processing of an image" because "the digital image … does not exist until a JPEG compressed image is stored in general purpose memory." Ex. PC09 at ¶¶ 110, 146. Because the applicant consistently stated that pre-processing must be performed on image files, not raw image data, these statements limit pre-processing image files. Digital Biometrics, 149 F.3d at 1347. These "statements made by a patent owner during an IPR proceeding can be considered during claim construction and relied upon to support a finding of prosecution disclaimer." Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017). Additional evidence supports PlainsCapital's construction As explained, patent owner's expert in IPR2015-00806 and IPR2015-00807 confirmed that the "manipulation of raw image data is not pre-processing of an image" because "the digital image … does not exist until a JPEG compressed image is stored in general purpose memory." Ex. PC09 at ¶ 110, 146. This is consistent with the understanding of a POSITA that "[t]he process of obtaining a digital image from a vision sensor, such as a camera," is "image captur[ing] (image acquisition)," while "image processing (picture processing)" means "[p]rocessing of the 18 0 information contained in a *digital image." Gray Decl. ¶ 87; Ex. PC15 at 235; see also Ex. PC19 at 442 ("[I]mage processing" means "[a]ny image improvement, such as refining a picture in a paint program that has been scanned or entered from a video source."). Thus, a POSITA would have also known that image processing is an operation distinct from image capturing and is performed on image files after they have been acquired. Gray Decl. ¶ 87. D. Term 3: "pre-processing parameters" Terms and Claims PlainsCapital's Lupercal's Construction Construction "pre-processing parameters" "configurable values "values directing the pre- directing the pre-processing, processing" Claims 30, 42 as opposed to merely default values" In the prior Research in Motion case, the term "pre-processing parameters" was construed as "values directing the pre-processing." Research in Motion, 2012 U.S. Dist. LEXIS 186414, at *37-38. In the subsequent HTC case, the parties "agree[d] that claim term 'pre-processing parameters' means 'values directing the pre-processing.'" HTC, 2015 U.S. Dist. LEXIS 179647, at *25-26 n.8. PlainsCapital proposes adopting a similar construction in this case with additional clarification to resolve disputes not previously presented. According to the '094 patent, an important feature of the invention is that the image submission tool is "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094, 2:35-38. The patent disparages a prior-art media submission tool that transfers files to a server from the user's desktop because it lacked "built in 'intelligence' to streamline the process of handling and transporting rich media objects from the front end." '094, 1:59-2:6. This lack of "intelligence" refers to the prior-art media submission tool's inability to process the media. Gray Decl. ¶ 95. A tool without intelligence is commonly known to be dumb because it can receive information and transmit information, but it cannot independently 19 0 process the received information. Gray Decl. ¶ 96. Indeed, Figure 3 shows a table "PWImageControl Interface" with configurable variables consistent with the '094 patent's purportedly important need in the field for configurability to perform a variable amount of intelligent pre-processing on media objects prior to upload. '094, Fig. 3; Gray Decl. ¶ 94. The patent states that the present invention's benefits include "the ability to submit media objects to web pages 'as is' without [the image submitter] making modifications to the media objects prior to sending" so that the "contributed media [is] 'made to order' … [and] meets … [the web site partner's] imaging specifications every time without human intervention." '094, 3:1- 9; see also id. at 5:4-7 ("[T]he tools will automatically prepare it to meet the requirements of the second location."). This ability for the tool's user to "mak[e] modifications" according to the "imaging specifications" or "requirements of the second location" is an important feature in the '094 patent's present invention because it provides the ability for the tool to be "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094, 3:1-9, 5:4-9, 2:35-38; Gray Decl. ¶ 97. The prior-art media submission tool allows the user to "transfer files to a server … without having to leave the web page," but it cannot "mak[e] modifications" according to the "imaging specifications" or "requirements of the second location." Gray Decl. ¶ 98. According to the patent, the invention is "configurable to perform a variable amount of intelligent preprocessing" because the image submission tool "requires … a Configuration Section." '094, 2:35-38, 5:18-22. This Configuration Section configures the image submission tool "to perform any preprocessing of the image that may be desired prior to upload" using "[c]onfigurable parameters" such as "DefaultImageWidth and DefaultImageHeight" values. '094, 5:30-39. Gray Decl. ¶ 99. Thus, the "values directing the pre-processing" must be "configurable" 20 0 because this is a required part of the image submission tool. Gray Decl. ¶ 100. These configurable values provide the image submission tool's ability to pre-process images, in contrast to the prior- art media submission tool that lacks "intelligence." Gray Decl. ¶ 101. The configurable value, however, cannot simply be default values of the existing web pages. Gray Decl. ¶¶ 102-104. As the '094 patent clarifies, the prior-art media submission tool lacks any intelligence. Thus, it is also not "configurable to perform a variable amount of intelligent preprocessing." This means that the prior-art media submission tool can only "allow[] users to, without leaving a web page, transfer files to a server" using the web page's default settings. '094, 1:59-62. Configurable value in the Configuration Section, however, "overrides various configurable default settings that the customer can control." '094, 5:29-30. In the '094 patent, the "customer[]" refers to the person integrating the image submission tool "into [the] web page," not the "web site visitors (users)." '094, 5:10-14. Thus, these default settings refer to the customer's existing settings in the customer's "own web pages," as opposed to the configurable values provided to the image submission tool. '094, 5:10-11, 5:29-30; Gray Decl. ¶ 102-104. By overriding the default settings using configurable values, the image submission tool has the "ability to preprocess the media objects in any number of ways prior to transporting to a second location" via the client-side intelligence built into the tools, which, according to the applicants, is a "key differentiator" of the invention and an important feature. '094, 2:35-38, 4:55-59, 4:49-50, 5:4-7. Because the '094 patent requires configurable values that override default values and disparages prior-art image submission tools that lacked such a feature, the term "preprocessing parameters" should be clarified to be "configurable values … as opposed to merely default values." See, e.g., Andersen, 474 F.3d at 1367; SafeTCare Mfg., 497 F.3d at 1269-70; Inpro II Licensing,, 450 F.3d at 1354-55; Saffran, 712 F.3d at 560. 21 0 The addition of the phrase "as opposed to merely default values" is consistent with how the Summit 6 court construed the term "pre-processing" to help "clarify that the material subject to pre-processing does not include data merely associated with the media object or digital content." Research in Motion, 2012 U.S. Dist. LEXIS 186414, at *15-16. Here, "as opposed to" helps clarify the distinction between using the configurable values of the image submission tool to direct pre-processing and using the default values of the existing web pages to direct pre- processing. Gray Decl. ¶ 106. E. 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" Terms and Claims PlainsCapital's Lupercal's Construction Construction "the pre-processing by the "pre-processing the one or No construction of this term image submission tool more image files using the is required. This term has its controlled by one or more image submission tool to plain and ordinary meaning pre-processing parameters meet the pre-processing as understood by a person of received from a device parameters specified by a ordinary skill in the art. separate from the user device receiving party, the pre- in a conversion of the one or processing parameters being more images or the one or received by the image more replacement images as submission tool from a device specified for use by a other than the user device receiving party" during a change of the one or more image files from one Claims 30, 42 form to another" Claim construction begins with the plain language of the claims. Phillips, 415 F.3d at 1312. PlainsCapital's proposed construction explains that pre-processing is performed "using the image submission tool to meet the pre-processing parameters specified by a receiving party" and the "pre-processing parameters being received by the image submission tool from a device other than the user device during a change of the one or more image files from one form to another." Lupercal offers no constructions for "the pre-processing. . . for use by a receiving party" term. 22 0 Pre-processing is performed using the image submission tool to meet the pre-processing parameters specified by a receiving party PlainsCapital's proposed construction explains that pre-processing is performed "using the image submission tool to meet the pre-processing parameters specified by a receiving party." This follows the intrinsic record. a) Pre-processing is performed using the image submission tool As explained above, the image submission tool (i.e., "the Prepare and PostTM tools") "prepares and submits media objects from inside a standard browser, referred to as the first location, to a second location or server." '094, 2:47-50; see also id. at 2:55-57 ("The Prepare and Post tools refer[] to browser-side components which together provide the ability to submit and transport media objects over the web to be stored and served."). "Using the Prepare and Post tools, end users can submit images in an immediate, intuitive manner. No technical sophistication is required … since the Prepare and Post tools handles all of these tasks for the user," including performing "intelligent preprocessing on media objects prior to upload." '094, 2:58-63, 2:35-38; see also id. at 2:38-39 ("In the case of digital images, the tool can perform sizing and formatting, for example."). The pre-processing is performed "using the image submission tool." Gray Decl. ¶¶ 112-113. b) Pre-processing is performed … to meet the pre-processing parameters specified by a receiving party The pre-processing is performed to meet the pre-processing parameters specified by a receiving party. Gray Decl. ¶ 114. As the '094 patent explains, the images are pre-processed to "meet[] [the web site partner's] imaging specifications" '094, 2:64, 3:7-9; see also id. at 5:4-7 ("[T]he tools will automatically prepare [the media] to meet the requirements of the second location."). As explained above, the image submission tool could meet the requirements of the web site partner because of the configurable values (i.e., pre-processing parameters). 23 0 Statements made during prosecution of the related patents reinforce that pre-processing is performed to meet the pre-processing parameters specified by a receiving party. Gray Decl. ¶ 115. During the prosecution of the application for the parent U.S. Patent Appl. No. 12/831,503, the applicant argued that the wherein clause ("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") was supported by the specification because the portions discussed above "clarifie[d] the role of pre-processing in preparing media for use by a receiving party." Ex. PC10 at 11. The applicant argued that "if the web site partner has a particular imaging specification (e.g., aspect ratio), then the pre-processing of the media object identifier can pre- process the image to conform to that imaging specification." Id. at 11-12. Thus, the pre- processing is performed "to meet the pre-processing parameters specified by a receiving party." Pre-processing parameters are received by the image submission tool from a device other than the user device during a change of the one or more image files from one form to another a) Pre-processing parameters are received by the image submission tool Although the claim language is silent as to what is receiving the pre-processing parameters, it necessarily follows from the plain language that the pre-processing parameters are received by the image submission tool that is stored for use on a user device. Gray Decl. ¶ 116. For the pre-processing by the image submission tool to be "controlled by" pre-processing parameters that are "received from a device separate from the user device," the image submission tool must receive the pre-processing parameters. Gray Decl. ¶ 116. 24 0 b) Pre-processing parameters are received … from a device other than the user device A POSITA would have understood "a device separate from the user device" as meaning "a device other than the user device" because it captures a POSITA's understanding of what it means to be a separate device. Gray Decl. ¶ 119. Moreover, Lupercal is estopped from arguing a different construction for this claim term. Not only was this term construed in HTC, 2015 U.S. Dist. LEXIS 179647, at *35, but the patent owner argued for, and the court ultimately adopted, the same construction that PlainsCapital proffers here for the "a device separate from the user device" phrase. See Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344, 1359 (Fed. Cir. 2017). c) Pre-processing parameters are received … during a change of the one or more image files from one form to another The claims recite that the pre-processing parameters are "received … in a conversion of the one or more images or the one or more replacement images." The phrase "in a conversion" is not used anywhere in the '094 patent's specification, 3 but in view of the '094 patent's 2F specification as a whole and the related prosecution histories, "received … in a conversion of the one or more images or the one or more replacement images" means "received … during a change of the one or more image files from one form to another." Gray Decl. ¶ 121. The phrase "in a conversion" modifies the context in which the pre-processing parameters are received by the image submission tool. Gray Decl. ¶ 120. The relevant claim language recites: "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 3 When the phrase "received … in a conversion" was first introduced in an amendment in related U.S. Patent Appl. No. 12/831,503, the examiner rejected the claims under 35 U.S.C. § 112 for "failing to comply with the written description requirement." Ex. PC11; Ex. PC12 at 3. After several responses by the applicant—relying on a limited description of the "Prepare and Post" tools in operation ('094, 2:55-64, 3:10-12), the examiner maintained the rejection (Ex. PC13), and the applicant abandoned the application (Ex. PC14). 25 0 more images." As written, the prepositional phrase "in a conversion" modifies the verb "received" immediately before it. Gray Decl. ¶ 119. Courts interpret claims in the way that "a party chooses to define its invention." Abbott Labs., 566 F.3d at 1295. Any attempt to sever the claim term from the claim language immediately preceding it ("pre-processing parameters received from a device separate from the user device") would improperly result in construing the claim term in a vacuum, rather than in the context of the whole claim. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1347 (Fed. Cir. 2008) (citing Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) ("proper claim construction … demands interpretation of the entire claim in context, not a single element in isolation.")); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (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 …."). To the extent that Lupercal may urge the court to adopt a construction that does not comport with the claim language by rewriting the claims, the court must refrain from doing so. SRAM Corp. v. AD-II Eng'g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006) ("[W]e are powerless to rewrite the claims and must construe the language of the claim at issue based on the words used."); Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) ("It would not be appropriate for us now to interpret the claim differently just to cure a drafting error …. That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention."). In addition, the phrase "in a conversion" provides meaning in two different contexts. Gray Decl. ¶¶ 120-121. First, the preposition "in" is used here in a temporal aspect, as opposed to indicating a location. Gray Decl. ¶ 120. The term "in a conversion," when viewed from a temporal 26 0 context, refers to when the pre-processing parameters are received by the image submission tool. Gray Decl. ¶ 120. Here, the preposition "in" is followed by the noun "a conversion," which refers to the process or act of converting something, so to be in a conversion means to be in the process of converting. From a temporal standpoint, to be in the process of doing something means that the process has started but is yet to conclude. Thus, to be "in a conversion" means to be at some point after the start and before the end of the conversion—that is, "during a conversion." Gray Decl. ¶ 120. Thus, the receipt of the pre-processing parameters must be during the course or duration of converting the one or more images files. Gray Decl. ¶ 120. For example, the pre-processing parameters are received by the image submission tool after it has started to convert the one or more image files but before the conversion is complete. Gray Decl. ¶ 120. Second, the term "conversion" provides a technical context because a "conversion" of the image files refers to a change of the one or more image files from one form to another. Gray Decl. ¶ 121. For example, the '094 patent explains that the image submission tool may, among other things, "encode … the media object," etc. '094, 4:63-5:3. Encoding the media object refers to the conversion of the media object into a particular form. Gray Decl. ¶ 122. The conversion or encoding of media objects is one of the ways the image submission tool can "preprocess the media objects … prior to transporting to a second location" and is "provided via this [client-side] intelligence" built into the image submission tool. '094, 4:49-5:3. The specification distinguished conversion of media objects from other ways of pre-processing, such as "resiz[ing]," "compressi[ng]," "crop[ping]," or other "enhance[ment]" of the images. '094, 4:59-5:3. The prosecution histories of related patents further support PlainsCapital's construction. The original claims in the parent U.S. Patent Appl. No. 09/357,836 list "[e]ncoding or otherwise converting the media object" as one of the ways of pre-processing a media object prior to 27 0 transportation to the second location. Ex. PC05 at 15; see also Ex. PC21 at 3 (claiming "[e]ncoding or otherwise converting the media object" as one of the ways for "digitally processing the media object prior to transportation to the second location"). Gray Decl. ¶ 123. Accordingly, the prepositional phrase "in a conversion of the one or more images or the one or more replacement images" should be construed as "during a change of the one or more image files from one form to another." The extrinsic evidence further reinforces the proposed construction. For example, Microsoft's Computer Dictionary defines "conversion" as "[t]he process of changing from one form or format to another." Ex. PC17 at 112; see also Ex. PC20 at 253 (defining "conversion" as "the act of converting" or "the process of being converted," and "convert" as "to change from one form or function to another"). Thus, both general and specialized dictionaries define "conversion" as some type of change. PlainsCapital's proposed constructions stay true to the claim language and are in accord with the intrinsic evidence and applicable law as well as extrinsic evidence. Therefore, PlainsCapital respectfully requests the Court adopt its proposed constructions. VIII. INDEFINITE CLAIM TERM A. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" The term "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" is indefinite because it does not inform a POSITA about the scope of the claim with "reasonable certainty" what is the objective standard for a user to make such a determination. Gray Decl. ¶ 128. Instead, the claim recites a subjective determination whether an image "should be replaced," which necessitates a judgment call by a user, not an objective standard. Gray Decl. ¶ 128. This is because one user's opinion as to 28 0 "whether [an] image should be replaced" based on the "visual representation" is not necessarily the same as another user's opinion as to "whether [that same] image should be replaced." Gray Decl. ¶ 128. Nor does the '094 patent set forth any objective criteria for determining whether an image "should be" replaced. Gray Decl. ¶ 130. The '094 patent fails to set forth any objective criteria for enabling users to determine from a visual representation of an image whether the image should be replaced. Gray Decl. ¶ 129. Nothing in the specification informs a POSITA how the generated visual representation enables a user to determine whether an image should be replaced with a replacement image. Gray Decl. ¶ 129. While the '094 patent describes that a user may replace one or more images that are "wrong" or "mistaken" images ('094, 4:7-13), it fails to provide guidance for determining from the visual representation whether the image is "wrong" or "mistaken"—both being subjective characteristics when considering images—and "should be replaced" with a replacement image. The patent offers no objective criteria for "wrong" or "mistaken," and leaves the subjective determination of whether an image "should be replaced" to the user. Gray Decl. ¶ 130. The Federal Circuit has found similar subjective terms indefinite. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014); Datamize, 417 F.3d 1342. In Interval Licensing, the Federal Circuit held that the term "unobtrusive manner that does not distract a user" was indefinite for failing to meet the threshold of informing those skilled in the art about the scope of the invention with reasonable certainty. Interval Licensing, 766 F.3d at 1371-74. In Datamize, the Federal Circuit found the claims were indefinite because they failed to provide one of ordinary skill in the art with any way to determine whether an interface screen satisfied the claim term "aesthetically pleasing." Datamize, 417 F.3d at 1349. An understanding that "aesthetically pleasing" related to the "look and feel of interface screens" or to the "aggregate layout of 29 0 elements on interface screens" was insufficient for defining the scope of the claim with reasonable certainty. Id. Here, the determination regarding whether an image should be replaced with a replacement image devolves into the sort of highly subjective inquiry "depend[ing] on the unpredictable vagaries of any one person's opinion" that the Court struck down in Datamize. Id. at 1350. The lack of objective guidance as to how a user may determine "whether the one or more images should be replaced with one or more replacement images" and the lack of objective boundaries for how a visual representation may enable such a determination render the claim term indefinite. Gray Decl. ¶¶ 129, 131. IX. CONCLUSION PlainsCapital respectfully requests that the Court adopt its constructions. PlainsCapital's constructions properly account for the claim language, the specification, and the prosecution histories. They are also consistent with the understanding of a POSITA, as reflected in the declaration of Stephen Gray. PlainsCapital's constructions "stay[] true to the claim language and most naturally align[] with the patent's description of the invention." Phillips, 415 F.3d at 1316. 30 0 Dated: November 15, 2019 Respectfully submitted, /s/ John G. Flaim John G. Flaim Texas Bar No. 00785864 john.flaim@bakermckenzie.com Mackenzie M. Martin Texas Bar No. 24066659 mackenzie.martin@bakermckenzie.com BAKER & MCKENZIE LLP 1900 North Pearl Street, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-3000 Facsimile: (214) 978-3099 Jeffrey A. Berkowitz (pro hac vice) Jency J. Mathew (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 Telephone: 571-203-2700 Fax: 202-408-4400 jeffrey.berkowitz@finnegan.com jency.mathew@finnegan.com Kevin D. Rodkey (pro hac vice) Shawn S. Chang (pro hac vice) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP 271 17th St. NW, Suite 1400 Atlanta, GA 30363-6209 Telephone: 404-653-6400 Fax: 404-653-6444 kevin.rodkey@finnegan.com shawn.chang@finnegan.com ATTORNEYS FOR DEFENDANT PLAINSCAPITAL BANK 31 0 CERTIFICATE OF SERVICE I hereby certify that on the 15th day of November 2019, a true and correct copy of the foregoing document was served on all parties of record via the Court's ECF filing system. /s/ John G. Flaim John G. Flaim 32