Lupercal LLC v. CitiBank, N.A.

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

BRIEF regarding [34] Brief by Plains Capital Bank.

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4 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, Plaintiff Case No. 6:19-cv-00202-ADA v. JURY TRIAL DEMANDED PLAINS CAPITAL BANK, Defendant. DEFENDANT PLAINSCAPITAL BANK'S RESPONSIVE CLAIM CONSTRUCTION BRIEF 4 Table of Contents I. Introduction ......................................................................................................................... 1 II. Lupercal's opening brief misapplies the "plain and ordinary meaning" doctrine in claim construction ............................................................................................................... 2 A. Term 1: "image submission tool" ........................................................................... 4 1. "Web-Based" and "Capable of Being Integrated into a Webpage" ............ 5 2. "Configured to perform a variable amount of intelligent preprocessing on media objects prior to upload"........................................ 9 B. Term 2: "pre-process" ........................................................................................... 11 C. Term 3: "pre-processing parameters" ................................................................... 13 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" ............... 15 E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" / "enabling a user to determine whether the one or more image should be replaced with one or more replacement images"......................................................................... 22 III. Conclusion ........................................................................................................................ 25 i 4 Table of Authorities Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) ............................................................................................... 24 Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007)......................................................................................... 11, 14 Chimie v. PPG Industries, Inc., 402 F.3d 1371 (Fed. Cir. 2005)................................................................................................. 3 Data General Corp. v. Johnson, 78 F.3d 1556 (Fed. Cir. 1996)................................................................................................. 16 Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005)......................................................................................... 23, 24 David Netzer Consulting Engineer LLC v. Shell Oil Co., 824 F.3d 989 (Fed. Cir. 2016)................................................................................................. 10 Dayco Products v. Total Containment, Inc., 258 F.3d 1317 (Fed. Cir. 2001) ................................................................................................. 2 Decisioning.com, Inc. v. Federated Department Stores, Inc., 527 F.3d 1300 (Fed. Cir. 2008) ................................................................................................. 6 Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314 (Fed. Cir. 2016) ................................................................................................. 3 Forest Laboratories, LLC v. Sigmapharm Laboratories, LLC, 918 F.3d 928 (Fed. Cir. 2019)............................................................................................. 9, 10 GoLight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) ................................................................................................. 3 Hill-Rom Services v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ................................................................................................. 3 Honeywell International, Inc. v. ITT Industries Inc., 452 F.3d 1312 (Fed. Cir. 2006)............................................................................................... 10 HZNP Medicines LLC v. Actavis Laboratories UT, Inc., 940 F.3d 680 (Fed. Cir. 2019) ........................................................................................... 23, 24 Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352 (Fed. Cir. 2016) ................................................................................................. 8 ii 4 Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006)............................................................................................... 11 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014)............................................................................................... 23 Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295 (Fed. Cir. 2004) ................................................................................................. 8 Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., 554 F.3d 1010 (Fed. Cir. 2009)............................................................................................... 10 Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366 (Fed. Cir. 2015) ............................................................................................... 24 Medicines Co. v. Mylan, Inc., 853 F.3d 1296 (Fed. Cir. 2017)............................................................................................. 5, 6 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) .......................................................................................................... 23, 25 Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005) ................................................................................................. 5 O2 Micro Int'l Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008) ....................................................................................... 2, 4, 22 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Fir. 2005) ..................................................................................... 2, 3, 4, 9 Retractable Technologies, Inc. v. Becton, 653 F.3d 1296 (Fed. Cir. 2011)............................................................................................. 4, 9 RF Deleware, Inc. v. Pacific Keystone Technologies, Inc., 326 F.3d 1255 (Fed. Cir. 2003)............................................................................................... 16 SafeTCare Manufacturing, Inc. v. Tele-Made, Inc., 497 F.3d 1262 (Fed. Cir. 2007)............................................................................................... 14 Saffran v. Johnson & Johnson, 712 F.3d 549 (Fed. Cir. 2013)................................................................................................. 11 SRI International Matsushita Electric Corp. of America, 775 F.2d 1107 (Fed. Cir. 1985) ................................................................................................. 3 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, 8, 12, 16 iii 4 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, 8, 17, 18 Summit 6, LLC v. Samsung Electronics Co., 802 F.3d 1283 (Fed. Cir. 2015) ............................................................................................... 21 Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004) ................................................................................................... 3 Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362 (Fed. Cir. 2012) ................................................................................................. 8 U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997)................................................................................................. 2 UltimatePointer, LLC. v. Nintendo Co., 816 F.3d 816 (Fed. Cir. 2016) ................................................................................................. 10 Vehicle IP, LLC v. Cellco Partnership, 757 F. App'x 954 (Fed. Cir. 2019) ............................................................................................ 8 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)............................................................................................. 9, 10 Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795 (Fed. Cir. 1999)................................................................................................... 8 iv 4 Table of Exhibits 1 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) 1 Exhibits PC01 to PC23 were previously filed with PlainsCapital Bank's Opening Claim Construction Brief filed on November 15, 2019 (ECF Nos. 35-1 to 35-23). v 4 Ex. PC19 Freedman Computer Desktop Encyclopedia at 442 ["image processing"] (2d ed. 1999) 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.") Ex. PC24 Response to Final Office Action, U.S. Patent Appl. No. 12/831,503 (Sept. 30, 2017) vi 4 I. INTRODUCTION Lupercal asserts that no construction is necessary for three terms: "image submission tool," "the pre-processing by the 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," and "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" (ECF No. 34). But Lupercal provides no explanation as to what is the "plain and ordinary meaning" is for each disputed term. Lupercal's approach, therefore, fails to resolve disputes regarding the scope of the claims and improperly leaves the scope for a jury to decide. Notwithstanding these deficiencies, Lupercal's proposed, unbounded plain meaning is incorrect because claim terms must be considered in light of the specification, which provides a specific understanding to a person of ordinary skill in the art ("POSITA"), as explained in PlainsCapital's opening claim construction brief (ECF No. 35). Moreover, Lupercal's reliance on prior court determinations of different construed terms fails to resolve the disputes over the terms at issue for U.S. Patent No. 9,386,094 ("the '094 patent"). For the remaining "pre-process" and "pre-processing parameters" terms, Lupercal proposes constructions based on prior court decisions, but these do not resolve the current dispute between the parties because Lupercal's constructions contradict the intrinsic record and the understanding of a POSITA. The claim term "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" is indefinite because the outer boundaries of the claim limitation are impermissibly vague and subjective. Lupercal's attempt to ascribe some meaning to this term does not meet the legal test that a POSITA must be able to identify the entire scope with reasonable certainty. 1 4 The Court should reject Lupercal's constructions and adopt PlainsCapital's constructions. The Court should also reject Lupercal's argument that the "enabling" term is definite. II. LUPERCAL'S OPENING BRIEF MISAPPLIES THE "PLAIN AND ORDINARY MEANING" DOCTRINE IN CLAIM CONSTRUCTION The "plain meaning" of a claim term is the "ordinary and customary" meaning that it would have to a POSITA at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Fir. 2005) (en banc). A determination that a claim term "'needs no construction or has the plain and ordinary meaning" is inadequate when the parties dispute "not the meaning of the words themselves, but the scope that should be encompassed by this claim language." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (internal quotation marks omitted). If "plain and ordinary meaning" does not resolve issues of "disputed meanings and technical scope," construction is necessary "to clarify and [] explain what the patentee covered by the claims, for use in the determination of infringement." Id. at 1362 (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). Lupercal's "plain and ordinary meaning" is particularly problematic because Lupercal does not explain what it alleges is the "plain and ordinary meaning." This not only fails to resolve the parties' disputes over scope—improperly passing the legal requirement to determine the scope to a jury—but also allows Lupercal to argue yet-to-be-identified restrictions for each term based not on the '094 patent's disclosure or the POSITA's understandings, but on litigation-driven positions to avoid prior art or overreach on alleged infringement. Dayco Prods. v. Total Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001) ("In approaching claim construction, we must always be conscious that our objective is to interpret the claims from the perspective of one of ordinary skill in the art, not from the viewpoint of counsel [] retained to offer creative arguments in infringement litigation."). Because Lupercal's "plain and ordinary" meaning would not result in a "fixed, 2 4 unambiguous, legally operative meaning to the claim [term]," the Court should reject Lupercal's assertion that no construction is required. Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1377 (Fed. Cir. 2005); Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1319-20 (Fed. Cir. 2016) (rejecting "plain and ordinary meaning" as "completely untethered to the context of the invention" and noting that "rejecting one proposed construction does not mean that a general jury instruction to give terms their plain and ordinary meaning resolves the relevant dispute"). Lupercal's reliance on cases cautioning against limiting claims to a single embodiment is inapposite because the '094 patent's specification identifies specific features as part of the "present invention" and distinguishes the prior art from the invention, thereby limiting claim scope. See, e.g., Phillips, 415 F.3d at 1316. The cases Lupercal cites stand for the unremarkable proposition that claims may not be limited to any single embodiment. See, e.g., Pl.'s Opening Cl. Constr. Br. 8 ("Pl. Br."); GoLight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004); SRI Int'l Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985); Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). But the same cases also explain that "claims are not necessarily entitled to a scope broader than [the] embodiment" described in the specification, for example, when a specification (1) describes features as the "present invention," (2) describes a feature as "require[d]," (3) characterizes a feature as "an important feature of the present invention," (4) "repeatedly disparage[s] an embodiment," or (5) describes a feature as a "very important feature." Hill-Rom Servs., 755 F.3d at 1372. Unlike the patents in the cases Lupercal cites, the '094 patent specification bears all the hallmarks that limit claims' scope because it repeatedly describes the "present invention" as 3 4 "web-based media submission tools," distinguishes the features of the described tool from the prior art, and repeatedly characterizes certain features of its "web-based media submission tool" as "required," "key," and "important," while disparaging prior-art tools as lacking those particular features. Def.'s Opening Cl. Constr. Br. 1, 13-15 ("Def. Br."). These teachings of the '094 patent thus define the scope of the claims. A. Term 1: "image submission tool" The parties agree that the claimed "image submission tool" is a program (i.e., software). See Pl. Br. 9-10. The dispute focuses on whether unambiguous statements in the intrinsic record limit the scope of the term to a "web-based program" that is "capable of being integrated into a webpage and configured to perform a variable amount of intelligent preprocessing on media objects such as images prior to upload." Pl. Br. 9-11. Lupercal argues that this "term needs no construction and is easily understood by reading the claims." Pl. Br. 9. This, however, fails to account for the intrinsic record, as required by Phillips. 415 F.3d at 1315. When the parties dispute "the scope that should be encompassed by [the] claim language," even if the terms have known meanings individually, the Court must resolve the dispute over scope. O2 Micro, 521 F.3d at 1361. Thus, even if the "context of the claim is perfectly clear" (Pl. Br. 9)—here it is not—"[i]t is axiomatic that the claim construction process entails more than viewing the claim language in isolation" and any construction must "tether the claims to what the specification[] indicate[s] the inventor actually invented." Retractable Techs., Inc. v. Becton, 653 F.3d 1296, 1305 (Fed. Cir. 2011). PlainsCapital's construction applies these well-established principles; but Lupercal asks this Court to ignore them and instead adopt an unexplained "plain and ordinary meaning" that does not account for unambiguous statements that describe "what the specification conveys is the invention." Id. 4 4 1. "Web-Based" and "Capable of Being Integrated into a Webpage" Lupercal argues that PlainsCapital is "attempt[ing] to limit the claims to a preferred 'web' embodiment" (Pl. Br. 9), but this oversimplifies the claim construction process by ignoring descriptions in the specification. It also misunderstands the prior claim constructions Lupercal relies on, which did not construe "image submission tool" or address "web-based," but rather considered narrower constructions. Lupercal does not make any arguments regarding the phrase "capable of being integrated into a webpage." Pl. Br. 9-10. Regarding "web-based," Lupercal's argument that "web" is an "embodiment" is belied by the specification itself, in which the "web-based" description is "highly indicative of the scope of the claims." Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1309 (Fed. Cir. 2017). The '094 patent clearly characterizes the "invention" as a "web-based program" and describes a web-based program in every embodiment (i.e., ActiveX control, Java applet, JavaScript, VBScript), which means the programs are web-based, even though not every program necessarily runs within the browser itself. '094 patent, 2:47-59; Ex. PC23 (Gray Decl.) ¶ 50. For example, Java scripts are small web-based programs that run within the web browsers of a user device. Ex. PC23 (Gray Decl.) ¶ 54. ActiveX controls, while also web-based programs, are invoked by a browser and downloaded to the user device to run within the operating system of the user device, outside of the browser environment. See Ex. PC23 (Gray Decl.) ¶ 53. Lupercal also ignores these repeated descriptions in the '094 patent to characterize the disputed term more broadly than the patent's actual disclosure. Nystrom v. TREX Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005). Indeed, Lupercal identifies no disclosure or embodiment in the '094 patent that is not "web-based." See generally Pl. Br. When "[d]ivorced from the specification, [image submission tool] could encompass almost any" program as Lupercal would have the Court believe, but "[r]ead in light of the specification," one of ordinary skill in the art would 5 4 understand the term "image submission tool" encompassed only web-based programs—that is, what the patent identified as the "present invention." See Decisioning.com, Inc. v. Federated Dep't Stores, Inc., 527 F.3d 1300, 1308 (Fed. Cir. 2008) (per curiam); '094 patent, 2:24-25. For example, in Decisioning.com, Federal Circuit construed "the claim term 'remote interface' [to] exclude[] consumer-owned personal computers" because "[n]owhere [did] the specification suggest that 'kiosk' might encompass a consumer's privately-owned personal computer" but instead, "describe[d] various features of the kiosk that would not be associated with consumer- owned personal computers." 527 F.3d at 1310-11. Moreover, the '094 patent disparages non- web-based submission tools (such as, FTP programs) as "cumbersome," "daunting," "[p]iecemeal," and "requir[ing] a level of sophistication that is beyond that of the ordinary user," and expressly states that a "broad-based solution to the foregoing problem requires a web-based media submission tool." '094 patent, 1:29-54, 1:62-65 ("For example, a user. . . can contribute pictures. . . without having to leave the web page and use an FTP program.") (emphasis added). The '094 patent further unambiguously characterizes its "invention" as a "web-based program" and goes on to describe only web-based programs. See, e.g., '094 patent, 2:24-25, 2:47-3:51. Thus, the ordinary meaning of "image submission tool"—when read in the context of the '094 patent specification—is limited to a web-based program. Similarly, in Medicines Co., the Federal Circuit construed the term "efficiently mixing" as limited to "the sole portion of the specification that adequately discloses 'efficient mixing' to the public," notwithstanding the specification asserting that the embodiment was "non-limiting." Meds. Co., 853 F.3d at 1309. Here also, the '094 patent's description of the invention as "web- based" "casts light on what [an image submission tool] is" to "enable[] one of ordinary skill in the art to achieve the objects of the claimed invention." Id. And unlike the specification in 6 4 Medicines Co, there is no attempt to characterize the "web-based embodiments" as "non- limiting." Thus, the claimed image submission tool is limited to "web-based" tools as described in the specification because a "web-based" image submission tool is precisely what the '094 patent discloses as the "invention." Lupercal's reliance on prior orders (Pl. Br. 9-10) is misplaced and contrary to the intrinsic record. The prior order in Summit 6 LLC v. Research in Motion Corp. was limited to the question whether the claimed "pre-processing" "must occur 'at the browser,'" not whether the "image submission tool" is "web based." Summit 6 LLC v. Research in Motion Corp., No. 3:11-cv- 367-O, 2012 U.S. Dist. LEXIS 186414 at *16 (N.D. Tex. May 21, 2012) ("RIM") (emphasis added). In fact, the RIM order did not even construe the term "image submission tool" or consider any arguments related thereto. Id. That court's non-binding conclusion rejecting RIM's narrower argument and finding no disclaimer of "pre-processing" occurring "outside of a browser," does not determine whether a different term, "image submission tool," is "web-based." Regardless, the RIM order rejected the patent owner's argument that "pre-processing" can be "silent as to the location of pre-processing," finding instead that the claimed "pre-processing" is located "at the client or local device." RIM, 2012 U.S. Dist. LEXIS 186414 at *21-22. Similarly, the prior court's finding in Summit 6 LLC v. HTC Corp., considered whether the claimed "pre- processing" must occur at the same server from which pre-processing parameters are received and to which the pre-processed image is transmitted, but did not consider the scope of the claimed "image submission tool" and whether it must be "web-based." 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"). Although HTC found there was no "clear disclaimer or disavowal of scope that would create a 'same server' limitation," it did not address the scope of an "image submission tool" or 7 4 whether it must be "web-based." Id. (emphasis added). Thus, RIM and HTC have no bearing on the parties' dispute here over the scope of "image submission tool." More importantly, Lupercal does not take into account the "present invention" is a "web-based media submission tool." '094 patent, 2:24-24; Def. Br. 9-10. Further, RIM's and HTC's reliance on Thorner v. Sony Computer Entertainment America and its statement that a patent must "clearly expressed intent to redefine a term or limit claim scope" is inapplicable. See RIM, 2012 U.S. Dist. LEXIS 186414 at *20 (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. 2012)); HTC, 2015 U.S. Dist. LEXIS 179647 at *29. Because the term "image submission tool" lacks "a plain or established meaning," the term "cannot be construed broader than the disclosure in the specification." Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1357 (Fed. Cir. 2016) (citing Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004); see also Vehicle IP, LLC v. Cellco P'ship, 757 F. App'x 954, 958 (Fed. Cir. 2019) (nonprecedential) (finding reliance on Thorner "misplaced" because the disputed term was found to lack "a plain or established meaning" and the court should not construe the term "more broadly than the specification's disclosure"). To the extent HTC found that "pre-processing" can be governed by their "plain and ordinary meaning" in that case, HTC, 2015 U.S. Dist. LEXIS 179647 at *15, the current dispute over "image submission tool" cannot be resolved based on these prior decisions because courts are not obligated to construe terms not "in controversy." Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The prior court's determination that "pre-processing" need not occur in a "browser" is not relevant to the current dispute over whether the claimed "image submission tool" must be web-based. 8 4 Lupercal does not address the "capable of being integrated into a webpage" limitation of PlainsCapital's construction. Pl. Br. 9-10. As explained in PlainsCapital's opening brief, every embodiment in the '094 patent describes the image submission tool as being integrated into a web page, such as being run within a web browser of a user device or invoked by a browser. '094 patent, 2:47-59; Def. Br. 9. Not only is this "web page integration" feature disclosed in every disclosed embodiment, but the '094 patent states that web page integration solves the problems of the prior art. Def. Br. 12-13; '094 patent, 2:1-6, 6:45-50. Thus, the claimed "image submission tool" must also be "capable of being integrated into a webpage." 2. "Configured to perform a variable amount of intelligent preprocessing on media objects prior to upload" Lupercal asserts that "configured to perform a variable amount of intelligent preprocessing on media objects such as images prior to upload" is "unnecessary." Pl. Br. 10. But Lupercal ignores that claims are construed "to capture the scope of the actual invention" and a construction cannot "allow the claim language to become divorced from what the specification conveys is the invention." Retractable Techs., 653 F.3d at 1305. Contrary to this canon of construction, Lupercal urges the court to construe "image submission tool" by ignoring the specification's description of the invention. Pl. Br. 9. Lupercal insists this court should only analyze the specification if there is a "clear and unmistakable" definition or disclaimer. Pl. Br. 9-10. This approach is fundamentally wrong because claims must, from the beginning, "be read in view of the specification, of which they are a part." Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 933 (Fed. Cir. 2019). Under the correct approach, "the specification is always highly relevant to the claim construction analysis." Phillips, 415 F.3d at 1315 (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also UltimatePointer, LLC. v. Nintendo Co., 816 F.3d 816, 823-24 9 4 (Fed. Cir. 2016). Indeed, the specification is typically "dispositive" because "it is the single best guide to the meaning of a disputed term" in the claim. Vitronics, 90 F.3d at 1582. For example, in UltimatePointer, the Federal Circuit rejected a plaintiff's argument that the specification must "explicitly define[] the relevant claim term or disclaimed claim scope" to limit the claims. UltimatePointer, 816 F.3d at 822. UltimatePointer acknowledged that while the term "handheld pointing device" in isolation may be broad enough to include both direct and indirect pointing devices, the "specification repeatedly emphasize[d] that the invention [was] directed to a direct-pointing system," "describe[d] the handheld device as a 'direct-pointing device,'" and "disparage[d] indirect pointing." Id. at 819-819, 823. The Federal Circuit then held that specification thus "limited [the claims] to a direct-pointing device." Id. UltimatePointer further explained that applying an "ordinary meaning," uninformed by the specification, "would incorrectly require us to divorce the claim language from the repeated direct-pointing description and indirect-pointing criticism in the specification." Id. at 824; see also Forest Labs., 918 F.3d at 932-933; Honeywell Int'l, Inc. v. ITT Indus. Inc., 452 F.3d 1312, 1317-1319 (Fed. Cir. 2006); David Netzer Consulting Eng'r LLC v. Shell Oil Co., 824 F.3d 989, 993-997 (Fed. Cir. 2016); Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1018-19 (Fed. Cir. 2009). Lupercal asks this Court to apply the same "ordinary meaning" approach that the Federal Circuit repeatedly rejected in UltimatePointer and other cases. Here, like in UltimatePointer, the '094 patent describes the "present invention" being "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:35-38. The patent disparages prior-art media submission tools as lacking "client-side intelligence" for performing "a variable amount of intelligent preprocessing," calling this a "key differentiator" and "[e]ven more important[]" than the other features of the 10 4 "invention." '094 patent, 4:49-50, 2:35-38. Because the '094 patent describes "configure[ed] to perform a variable amount of intelligent preprocessing on [images] prior to upload" as a "key differentiator" of the "present invention" and uses this feature to distinguish prior art ('094 patent, 2:24-25, 2:35-38, 4:49-50), these "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 Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367-69 (Fed. Cir. 2007). As such, the claimed "image submission tool" must be construed to include these features, regardless of whether those features are expressly recited in the claims. See, e.g., Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1354-55 (Fed. Cir. 2006) (citation omitted) (finding disclaimer when the specification described a "very important feature. . . in an aspect of the present invention" and disparaged alternatives to that feature); Saffran v. Johnson & Johnson, 712 F.3d 549, 560 (Fed. Cir. 2013) (finding disclaimer when the specification describes "macromolecular containment" as a "key feature of the invention"). Accordingly, the Court should adopt PlainsCapital's construction, which defines the proper scope of the claimed "image submission tool." B. Term 2: "pre-process" Both parties' constructions largely follow the prior construction of "pre-processing" from related parent patents, except they dispute whether (1) pre-processing is on "images" or "image files" and (2) "one or more" is necessary in the second recitation of either "images" or "image files." For the first dispute, Lupercal's proposed construction of "images" is wrong because it ignores that an image is a "media object." The second dispute is moot because both constructions are substantially similar in scope whether the "one or more" is expressly recited. Lupercal argues that "pre-process" should recite "images, because "an 'image' . . . may not necessarily be stored as an image file" without any basis in the patent's specification. Pl. 11 4 Br. 11. Lupercal ignores the patent's specification, which defines images as a specific type of "media object" (e.g., "image media object") as opposed to other media objects such as video, 3D objects, slide shows, graphics, movies, sound clips or sound files, etc. '094 patent, 1:20-11, 1:43- 44, 2:50-51, 4:59. Media objects, as used in the '094 patent, refer to media files (e.g., a picture, an audio recording, a video recording, a text document, etc.) that have been digitally encoded and stored. '094 patent, 1:29-39 ("[S]haring digital images over the Internet" involves the steps of "selecting the files. . . then sending the files."), 1:57-65 (prior art tool "allows an arbitrary file to be dragged and dropped onto a web page control for upload. . . [to] contribute pictures [images], documents, zip files, etc."); Ex. PC23 (Gray Decl.) ¶¶ 82, 83. Thus, because the '094 patent defines image media as image files, PlainsCapital's construction, which recites "image files," is correct. The parties' second dispute over "one or more" does not affect scope, but rather the ability to provide a clear construction for a jury. Lupercal asserts that its construction "repeats the 'one or more images' language to make clear that only one image needs to be processed" and that PlainsCapital's construction referring to "the image files" "indicat[es] there must be multiple image[s]." Pl. Br. 11. Lupercal, however, ignores that PlainsCapital's construction of "pre- processing" follows the same structure used in the prior construction, which recited "modifying the [ . . . one or more image files, video files, or audio files], as opposed to data merely associated with the [ . . . image files, video files, audio files] at the client or local device prior to transmission to a remote device," and did not include the second "one or more." HTC, 2015 U.S. Dist. LEXIS 179647 at *91-92 (brackets in original; ellipses added). PlainsCapital's construction reciting "the image files" in the "as opposed to" language clarifies that no data associated with any of the image files is modified during pre-processing. 12 4 Lupercal's proposed construction also creates needless complexity because, as Lupercal acknowledges, it introduces a second disjunctive "or." Pl. Br. 11. By using the disjunctive "or" twice, Lupercal makes the scope ambiguous as to whether pre-processing excludes data associated with all of the image files, when more than one is pre-processed, or just one of the multiple pre-processed image files. Because Lupercal's disjunctive "or" could be later argued to change the scope to permit modifying some, though not all, of the "data. . . associated with the one or more images," Lupercal's proposed construction is incorrect. Accordingly, the Court should reject Lupercal's construction and adopt PlainsCapital's construction. C. Term 3: "pre-processing parameters" Lupercal proposes adopting the exact construction construed in HTC (Pl. Br. 12), but that prior construction fails to resolve the current disputes not previously considered. Def. Br. 19. The parties disagree on whether the "pre-processing parameters" must be "configurable" and exclude using "default values" existing on the user device to direct the pre-processing. Pl. Br. 11-13; Def. Br. 24-25. But, pre-processing directed by "configurable values" and not merely "default values" is necessary to define the scope of "pre-processing parameters" because the '094 patent explains that an "even more important[]" feature of the image submission tool is that the parameters are "configurable to perform a variable amount of intelligent preprocessing on media objects prior to upload." '094 patent, 2:24-25, 2:35-38. PlainsCapital's construction clarifies that the pre- processing parameters must be "configurable" and not merely "default values" because "configurable values" are a required part of the image submission tool's intelligence, as explained above and in PlainsCapital's opening brief. Def. Br. 19-21. Because the patent describes these features as both "required" and "important[]," PlainsCapital's construction aligns 13 4 with the metes and bounds of the invention and identifies the proper scope of disputed claim term. See, e.g., Andersen, 474 F.3d at 1367 (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)). PlainsCapital's construction also clarifies that the pre-processing parameters cannot be the default settings. As Lupercal acknowledges, the pre-processing parameters must be sent from the separate device and cannot be parameters originating or previously stored on the user device. Pl. Br. 15. This is consistent with the specification, which states that the values provided to the image submission tool override existing default settings on the user's device. '094 patent, 5:10- 14, 5:29-30. Here, PlainsCapital's "as opposed to" language clarifies this distinction between the "configurable values," which override the default values of the user device, and "default values," which are existing default settings on the user device. Thus, even if "the separate device. . . send[s] the same pre-processing parameters each time" (Pl. Br. 12), or if the pre-processing parameters are the same as the existing default settings on the user's device, the pre-processing parameters are still "configurable values" because they override existing default settings on the user's device. This distinction is important because the media submission tool existing in the prior art allowed users to transfer files using the user device's default settings. See '094 patent, 1:59-62, 4:55-5:7. If the claimed pre-processing parameters could be the existing default settings (and not configurable values that override the default settings), the image submission tool would effectively be no different than the prior-art media submission tool described in the Background section of the '094 patent. 14 4 Moreover, since pre-processing parameters can be controlled by the receiving party ('094 patent, 5:29-31) and changed "to suit [their] needs," ('094 patent, Appendix A), the claimed pre- processing parameters cannot include "default values" on the user device. This is because the default settings could depart from the receiving party's required specifications, and pre- processing directed by default settings would not meet the receiving party's requirements if they have been changed. The claimed image submission tool must provide users "an error free way to contribute media" ('094 patent, 3:10-12) and only pre-processing directed by "configurable values" that override the default settings on the user device ensure that images are not pre- processed using potentially outdated default settings. See '094 patent, 3:7-9. Accordingly, the Court should adopt PlainsCapital's construction. 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" Lupercal contends that, after construing "pre-process" and "pre-processing parameters," the remainder of this larger phrase requires no further construction because it is "clear and understandable to a jury." Pl. Br. 13. Lupercal is wrong because the claim language remains convoluted and difficult to parse even after construing "pre-process" and "pre-processing parameters." The remaining parts of the term, and in particular "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," do not become any clearer or more understandable after construing "pre-process" and "pre-processing parameters." The multiple stacked prepositional phrases make the claim language awkward and difficult to parse, and PlainsCapital's construction clarifies the meaning of the claim term. PlainsCapital's construction provides understandable guidance for the jury. In contrast, Lupercal 15 4 does not explain the "plain and ordinary meaning" of the claim language. See generally Pl. Br. Accordingly, the Court should construe this term because Lupercal's proposed "plain and ordinary meaning" would not resolve the parties' dispute regarding when the pre-processing parameters are received. Lupercal's assertion that the phrase is "clear and understandable to a jury" cannot be reconciled with the fact that courts previously construed similar terms in related patents. Pl. Br. 13-14. For example, in HTC, the court adopted the patent owner's argument that the claim term "pre-processing parameters that are received from a device separate from a client device" required a clarifying construction. HTC, 2015 U.S. Dist. LEXIS 179647 at *27. Lupercal should not be permitted to advance a position that is contrary to that successfully urged by the patent owner in a previous proceeding simply because its interests have changed. RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1262 (Fed. Cir. 2003) (citing Data Gen. Corp. v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir. 1996)). Lupercal does not try to reconcile the need for a prior construction of a less convoluted term with its current position that a much more specific term— "pre-processing parameters received from a device separate from the user device in a conversion of the one or more images. . ."—is unnecessary. Pl. Br. 13. Lupercal first asserts that PlainsCapital's construction is incorrect because "images" are pre-processed, rather than image files. Pl. Br. 14. Lupercal is wrong because it neglects the '094 patent's disclosure that images are media object files, as discussed above in Section II.B. Lupercal's second argument incorrectly contends that the pre-processing parameters' "control" is not restricted to "meeting" the pre-processing parameters. Pl. Br. 14. Lupercal is wrong because it cannot be correct that a "pre-processing parameter" is not met by the pre- processing it controls. Lupercal does not explain how pre-processing "to meet the pre-processing 16 4 parameters" would improperly restrict this term and/or identify any pre-processing operations Lupercal alleges are covered by the claims that do not "meet" the parameter controlling the pre- processing. If the parameters specify, for example, that an image file should have a specific aspect ratio, Lupercal's argument would permit "pre-processing" that does not meet this aspect ratio, which renders the parameter and term meaningless. Id. PlainsCapital's construction, on the other hand, would require that the example aspect ratio parameter be met during pre-processing. Lupercal also argues that PlainCapital's construction is wrong because the claims only recite that the pre-processing parameters "control" pre-processing, rather than pre-processing to "meet" the pre-processing parameters. Pl. Br. 14. Lupercal's assertion is inapposite because pre- processing to "meet the pre-processing parameter" is precisely how the pre-processing parameters control the pre-processing. See, e.g., '094 patent, 2:64, 3:7-9 (images are pre- processed to "meet[] [the web site partner's] imaging specifications"); see also id. at 5:4-7 ("[T]he tools will automatically prepare [the media] to meet the requirements of the second location."). PlainsCapital's construction does not restrict the scope of control, it merely explains how pre-processing is described by the intrinsic record. Def. Br. 23-24. Lupercal also argues that PlainsCapital's construction to "meet" the pre-processing parameters is "awkward," but it does not explain why. Pl. Br. 14. This language is not "awkward," nor should any alleged awkwardness preclude "meet" from being used to explain the meaning of the claim as it has been used by both the plaintiff during litigation involving related patents and Lupercal itself. For example, the plaintiff in the RIM case used "meet" to argue that the term "'placement of. . . digital content into a specified form' or 'to place. . . digital content in a specified form'" should be construed as "modifying the underlying data of the digital content to meet certain specifications." RIM, 2012 U.S. Dist. LEXIS 186414 at *60-61 (emphasis 17 4 added). The plaintiff in RIM used "meet" to describe "the act of pre-processing," tacitly admitting that it helps the jury understand the meaning of pre-processing, which Lupercal cannot now dispute as a subsequent assignee of the familial patents. Id. Moreover, Lupercal itself uses "meet" to describe the '094 patent's technology as "provid[ing] . . . access by website partners to contributed media that consistently meets the recipient's specifications." See, e.g., Pl. Br. 4-5 (emphasis added). Thus, contrary to Lupercal's assertion, PlainsCapital's construction is not "awkward" because "meet the pre-processing parameters" is consistent with the intrinsic record and Lupercal's own description of the patent, does not restrict the scope of the claims, and is useful to explain to a jury how the pre-processing parameters control the pre-processing. Lupercal's third argument asserts that "the claims have no restriction on when the image submission tool receives the pre-processing parameters." Pl. Br. 14-15. This is incorrect because the plain language of the claims expressly recites both when the pre-processing parameters are received and where they are received from. Def. Br. 25-28. As Lupercal acknowledges, the prepositional phrase "from a device separate from the user device" modifies the word "received" such that the parameters must be received from a separate device. See Pl. Br. 15. Similarly, the immediately subsequent "in a conversion" also modifies "received" in the claims, which Lupercal completely ignores in its opening brief. Instead of analyzing the entire phrase "received from a device separate from the user device in a conversion," Lupercal myopically focuses only on the language "from a device separate from the user device" and truncates the remaining claim language by replacing "in a conversion" with ellipsis. See Pl. Br. 15 ("The present claims mirror this approach and recite the 'pre-processing processing parameters [are] received from a device separate from the user device. . . .'" (original emphasis 18 4 omitted)). Lupercal misrepresents the parties' dispute, but more importantly does not negate that "in a conversion" specifies when the pre-processing parameters are received. As explained in PlainsCapital's opening brief, the prepositional phrase "in a conversion" provides both the temporal and technical context for "receiv[ing]" pre-processing parameters. See Def. Br. 25-28. Lupercal's characterization of PlainsCapital's construction as "attempt[ing] to limit the present claims to receiving the pre-processing parameters 'while' the pre-processing operation is occurring" is wrong. Pl. Br. 14-15. In the claims, "the pre-processing by the image submission tool [is] controlled by one or more pre-processing parameters received. . . in a conversion of the one or more images or the one or more replacement images[.]" '094 patent, 12:30-34 (emphasis added); see also id., 14:9-14. This means that the pre-processing parameters could be received (1) during a conversion in which they are used for the conversion or (2) during a conversion where they subsequently get used to pre-process. In either case, the pre-processing parameters received "in a conversion" are limited to the pre-processing of the image files for the current submission, not for a prior submission. Thus, pre-processing parameters previously downloaded and stored on the user device for processing and submission are excluded. This is consistent with the specification, which explains the benefit of the alleged invention is that it produces images that are "made to order" and "meet the requirements of the [receiving party] . . . every time." '094 patent, 3:7-9 (emphasis added); see Ex. PC24 at 10 (Response to Final Office Action, U.S. Patent Appl. No. 12/831,503 (Sept. 30, 2017)) (Applicant explaining during prosecution of a related application, that the "made to order" description in the specification describes precisely what it means for pre-pressing parameters to be "received in a conversion as specified for use by a receiving party"). Even Lupercal acknowledged compliance with the receiving party's requirement "every time" as a benefit provided by the alleged 19 4 invention over prior-art image submission tools, explaining that "[a]t the time [of the invention], image sharing proved challenging to most users. . . [because] the recipient's image parameters might change over time, requiring the sender to re-prepare the images." Pl. Br. 4-5 (emphases added). This distinction is important because if the claimed pre-processing parameters could include static default pre-processing parameters received for prior image submission, the claimed image submission tool would not provide the required benefit of producing "made to order" images that meet the receiving party's requirement "every time." For example, if the image submission tool uses parameters received in a prior submission, then any changes in the receiving party's requirements during the interim period between image submissions would require the image submission tool to re-process the images. Accordingly, only pre-processing parameters received during the current image submission would provide the benefit of the image submission tool described above because pre-processing parameters received from past submission may no longer reflect the requirements of the receiving party. Because pre-processing parameters received non-contemporaneous to when the image submission tool is preparing an image for submission would not provide the purported benefit of "made to order" images that meet the receiving party's requirements "every time," the claimed pre-processing parameters are those received "while the image submission tool performs a change of the one or more image files from one form to another." 2 2 PlainsCapital's opening brief identified its construction of the "received. . .in a conversion" term as "received. . . during a change" (Def. Br. 22, 25-28 (emphasis added)), whereas Lupercal's opening brief identified PlainsCapital's construction of the same term as "received. . . while the image submission tool performs a change." Pl. Br. 13-15 (emphasis added). PlainsCapital submits that positions taken in its opening brief for the proper construction of this claim term are consistent under either construction. Without waiving the right to argue any differences between the two constructions, PlainsCapital submits the correct construction for the "received. . . in a conversion" claim term is "received. . . while the image submission tool performs a change." 20 4 Lupercal also misapplies the Federal Circuit's prior construction of "being provided to" for the related '482 patent. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291-92 (Fed. Cir. 2015) ("Samsung"); Pl. Br. 15. The language considered by the Federal Circuit did not include the temporal "received. . . in a conversion" language, and thus does not bear on the proper construction here. The chart below identifies the language of the '094 patent at issue here and the previously construed language from the '482 patent: '094 Patent (Claims 30 and 42) '482 patent (Claim 38) the pre-processing by the image said one or more pre-processing submission tool controlled by one or parameters being provided to said client more pre-processing parameters received device from a device separate from said from a device separate from the user client device, said one or more pre- device in a conversion of the one or processing parameters controlling said more images or the one or more client device. . .; replacement images as specified for use by a receiving party; The additional recitation of the temporal "in a conversion" modifying "received" in the '094 patent supports, rather than rebuts, PlainsCapital's construction. "[I]n a conversion" differentiates the '094 patent from the related '482 patent and requires an express temporal limitation on the "receiv[ing]" that Lupercal attempts to read out of the claims. Moreover, the Federal Circuit found in Samsung that, although the phrase "being provided to" does not "require current or ongoing activity" or "active receipt of the pre- processing parameters," several other claims did require temporal limitations because they "use[d] language that indicates a past activity" or "use[d] language indicating that the provision must occur during the operation of the claimed method." 802 F.3d at 1291-92. Thus, Lupercal is wrong to imply that the Federal Circuit rejected any temporal limitations. Pl. Br. 15. Here, 21 4 "received. . . in a conversion" provides an express temporal limitation, like the temporal claims of Samsung, and Lupercal cannot read that language out of the claims. PlainsCapital's construction properly accounts for this language and should be adopted. Lupercal's fourth argument incorrectly tries to broaden "conversion" beyond "a change. . . from one form to another," in contrast with the intrinsic record. See Pl. Br. 15-16. Lupercal's argument conflates the broader construction that includes a "conversion" with the separate "pre- processing" and "pre-processing parameter" terms. Notably, Lupercal does not argue that "a change. . . from one form to another" is not a correct construction for "conversion," only that it should not be used to limit "pre-processing" to "a particular subset of pre-processing operations." Pl. Br. 15-16. Because the claims recite a specific type of pre-processing—i.e., a "conversion" of the image files—it is helpful to a jury to understand what "conversion" means. O2 Micro, 521 F.3d at 1361-62. As explained in PlainsCapital's opening brief, the intrinsic and extrinsic record defines "conversion" as a "change [] from one form to another." Def. Br. 27-28. Because it does not relate to the meaning of "conversion," Lupercal's argument is moot. E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" / "enabling a user to determine whether the one or more image should be replaced with one or more replacement images" Lupercal asserts that the specification describes how the "process of displaying images to the user [] allow[s] (enables) the user to determine if the images should be replaced." Pl. Br. 17. However, the portions of the specification Lupercal relies on describe the image submission tool as providing an "opportunity for user confirmation" by displaying a visual representation of the images to the user prior to submitting the images and that, "if the wrong image is placed in a media object identifier, the correct image may be placed in the media object identifier." '094 patent, 4:4-13 (emphasis added). The specification does not provide any objective standard to 22 4 determine criteria for determining whether an image "should be replaced," only that a wrong image can be replaced. Def. Br. 28-30 (emphasis added). This distinction is important because the claims recite "generat[ing] a visual representation, the visual representation enabling a user to determine whether the one or more images should be replaced," not merely enabling replacement of the one or more images. '094 patent, 12:21-24 (emphasis added). Because the intrinsic record fails to provide this objective standard, a POSITA could not reasonably determine the outer boundary for generating a visual representation that enables such a determination, and thus the claims are indefinite. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014). A claim's "scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005), abrogated on other grounds by, Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Rather, "some objective standard must be provided in order to allow the public to determine the scope of the claimed invention." HZNP Meds. LLC v. Actavis Labs. UT, Inc., 940 F.3d 680, 698 (Fed. Cir. 2019) (citing Datamize, 417 F.3d at 1350). The absence of objective criteria renders the '094 patent's claims indefinite because it undercuts a POSITA's ability to determine, with reasonable certainty, the scope of the invention. Nautilus, 572 U.S. at 901. Lupercal argues only that "the user is able to determine whether the images are satisfactory or need to be replaced," but this only emphasizes the indefiniteness. Pl. Br. 17. Nothing in the specification sets forth objective criteria for determining whether an image is "satisfactory" or "needs to be replaced," nor what constitutes a "wrong" image. Lupercal's argument only underscores the subjective nature of the claim term that "depend[s] on the 23 4 unpredictable vagaries of any one person's opinion," such as a nebulous satisfaction. See, e.g., Datamize, 417 F.3d at 1350. Giving this term its "plain and ordinary meaning" does not render the claims definite because there is no objective way for a POSITA to determine from a visual representation of an image whether the image is "satisfactory," or "wrong" and "should be" replaced. Def. Br. 29-30; see, e.g., Datamize, 417 F.3d at 1352. One user's "satisfactory" may differ from another's. Def. Br. 29-30; Ex. PC23 (Gray Decl.) ¶ 128. In the absence of such objective standard, an POSITA has no guidance regarding the outer boundaries of scope of this claim. Nor would a POSITA understand how to generate a visual representation because there is no objective standard for the visual representation. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) (finding that claim requiring comparison to moving target was indefinite because the patent failed to direct those of ordinary skill in the art to an objective standard to make the appropriate comparison). Because no objective standards exist in the '094 patent for determining whether an image is "wrong" or "satisfactory," or for understanding the boundaries of how visual representation would enable a user to determine whether an image satisfies a standard for "wrong" or "satisfactory," this claim term "might mean several different things and no informed and confident choice is available among the contending definitions," and is indefinite. HZNP Meds., 940 F.3d at 698 (citing Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015)). Lupercal also fails to articulate what it alleges is the "plain and ordinary meaning" for this term, and thus the plain meaning remains undefined and ambiguous, and cannot be correct. Lupercal does not suggest that any objective standard exists in the intrinsic record for informing 24 4 a POSITA of the claim scope. See generally Pl. Br. 16-17. That no objective standard exists is not surprising. Because the claims "fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention," they are indefinite. Nautilus, 572 U.S. at 901. III. CONCLUSION The Court should adopt PlainsCapital's constructions of all disputed terms. The Court should also find that claims 30 and 42 are indefinite. 25 4 Dated: December 10, 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 26 4 CERTIFICATE OF SERVICE I hereby certify that on the 10th day of December 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 27