Lupercal LLC v. CitiBank, N.A.

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

BRIEF regarding [37] Brief by Lupercal LLC.

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8 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Plaintiff Case No. 6:19-cv-00201-ADA v. JURY TRIAL DEMANDED LEAD CASE CITIBANK, N.A., Defendant LUPERCAL LLC, Case No. 6:19-cv-00202-ADA Plaintiff JURY TRIAL DEMANDED v. PLAINS CAPITAL BANK, Defendant PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF 8 TABLE OF CONTENTS I. DISPUTED TERMS ................................................................................................... 1 A. Term 1: "image submission tool" (Claims 30-32, 38, 43-44, 50) ....................... 1 B. Term 2: "pre-process" (Claims 30, 42)............................................................... 3 C. Term 3: "pre-processing parameters" (Claims 30, 42)...................................... 5 D. Term 4: "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" (Claims 30, 42) ................................ 7 E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" (Claim 30), "enabling a user to determine whether the first image should be replaced with a first replacement image" (Claim 42) ........................................................................................................ 12 II. CONCLUSION ......................................................................................................... 14 PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |i 8 EXHIBITS1 Exh No. Description PX-557 U.S. Patent No. 6,895,557 PX-482 U.S. Patent No. 7,765,482 PX-515 U.S. Patent No. 8,612,515 PX-094 U.S. Patent No. 9,386,094 A Summit 6 LLC v. Research in Motion Corp., 2012 U.S. Dist. LEXIS 186414 (N.D. Tex., May 21, 2012) B Summit 6 LLC v. HTC Corp., 2015 U.S. Dist. LEXIS 179647 (N.D. Tex., Mar. 21, 2015) C Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015) 1 These exhibits were provided with Lupercal's Opening Brief (Dkt. Nos. 34-1 – 34-7). PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |ii 8 The parties have extensively briefed the five disputed claim terms. In this reply, Lupercal does not repeat each of its prior arguments. Instead, Lupercal addresses specific arguments and issues. By doing so, Lupercal does not concede arguments previously addressed and which are not repeated. I. DISPUTED TERMS A. Term 1: "image submission tool" (Claims 30-32, 38, 43-44, 50) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and "web-based program capable of being ordinary meaning) integrated into a webpage and configured to perform a variable amount of intelligent preprocessing on media objects such as images prior to upload" The term "image selection tool" is explicitly and plainly defined by the claim language itself. Namely, the image submission tool includes three primary components: an image identifier section, a submission section, and an image upload control section. The image identifier section performs three operations: it generates a visual representation of one or more images, it enables a user to enter tent information, and it pre-processes one or more images. This is what an image submission tool is. It is a tool that submits images according to the operation of the recited components. As demonstrated in the opening and responsive briefs, the claims are not limited to "web-based programs" or browsers, nor do the claims require the image submission tool to be "capable of being integrated into a webpage." Further, during prosecution, the applicants never distinguished the prior art based on whether the pre-processing occurred within a web browser or a web-based program. Instead, as held by Judge PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |1 8 O'Conner, "the applicants distinguished the Fredlund prior art on the basis of client-side processing, not processing within a browser." Exh. A, at *21. As acknowledged, the prior art did not perform any pre-processing on the user's device (i.e. client-side). Prior attempts to redraft the scope of the claims to limit them to a web-based application, as the Defendant urges, have been repeatedly rejected: Without such disclaiming language, Defendants' argument reduces to an improper attempt to limit the scope of the claims to the preferred embodiment. Likewise, in the previous Summit 6 action, the Court found that the invention's description "as a 'web-based' media submission tool' is not a 'clear and unmistakable disclaimer' of pre-processing that occurs outside of a browser. Id. (citing Exh. B, at *30).2 [T]he Court notes that: (1) the portions of the specification that discuss pre-processing within a browser relate to the preferred web site embodiment, and may not be grafted upon the claims as a whole; and (2) the applicants distinguished the Fredlund prior art on the basis of client-side processing, not processing within a browser. Furthermore, the Court finds that the applicants' description of the current invention as a "web-based media submission tool" is not a "clear and unmistakable disclaimer" of pre-processing that occurs outside of a browser. Exh. A, at *21. Because there is no clear and unmistakable disclaimer that the image submission tool is limited to only web-based applications, Defendant's attempt to restrict the claims to a "web-based program capable of being integrated into a webpage" must be rejected. Further, because the claim language defines the meaning and scope of the image 2 In the opening brief, this quotation was incorrectly cited to the below quotation. PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |2 8 submission tool itself, no further construction of this term is necessary. It is plainly understandable to anyone. B. Term 2: "pre-process" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction "modifying the one or more images, as "modifying the one or more image files, as opposed to data merely associated with opposed to data merely associated with the one or more images, at the user device the image files, at the user device prior to prior to transmission to a remote device" transmission to a remote device" Defendant's proposed construction should be rejected for at least three reasons. First, the claims do not require the image to be stored as a file with a filename in main system memory. Second, the claim only requires processing of a single image–not multiple images. Third, the claims are open ended "comprising" claims that do not prohibit additional processing on the images or data associated with the images. The images are not limited to image files with a filename that are stored in main system memory From the Defendant's response brief, it appears Defendant is attempting to take the extreme position that the claimed image, regardless of what processing has been performed on it and whether the image has been encoded according to known and standard formats, such as bmp, jpg, gif, tiff, png, etc., it is not an image unless it is actually stored on the device's main system memory and has an associated filename. Such a position is clearly a non-infringement position divorced from any plain and ordinary meaning of image. PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |3 8 According to Defendant's own proposed construction for "image submission tool," an image is a media object. Def. Res. Br. at 4 (describing the claimed image submission tool as being capable of "preprocessing on media objects such as images prior to upload.") (emphasis added). See also id. at 11 (Defendant asserting that "an image is a 'media object'") (emphasis added); Id. at 12 ("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.)" (emphasis added and citations to the '094 specification omitted); PX-094 at 1:18-21 (referring to the field of the invention as publishing digital content, such as image media objects). Lupercal agrees that an image is a media object, which can be processed, transmitted, and stored in a variety of ways. However, an image, whether it is stored in RAM, a buffer, a database, a media object identifier, etc. is still an image even if it is not stored in main system memory with a designated filename. The '094 Patent never disavows the scope of images to being only image that are stored as a system file with a local filename. The claims do not require processing on multiple images The Defendant's proposed construction recites "as opposed to data merely associated with the image files." The reference to "image files" implies multiple images are required to be processed. Such a construction should be rejected because to claim only requires processing on a single image. The claims are open ended comprising claims that do not prohibit additional processing on images or image data For the first time in Defendant's response brief, Defendant argues this limitation also requires a negative limitation that no additional processing can occur on data PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |4 8 associated with any image. "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.'" Def. Res. Br. at 12. Such a negative limitation must be rejected. The pre-processing limitation requires the image itself be processed as opposed to only processing data associated with the image, such as image metadata. Thus, if only image metadata is processed, the claim is not satisfied. However, nothing precludes processing both the image and the image metadata. That is, as long as the image is processed, a claimed system could also perform additional processing image metadata. For example, if the pre-processing operation is to reduce the size of the image, the resultant image will be smaller. As such, the image metadata identifying the size of the image would be updated (e.g. processed) to reflect the new smaller size. Because the claims are open ended "comprising" claims, the claims necessarily cover devices that perform such additional processing operations. Because the claims do not exclude such additional processing, Defendant's attempt to inject an unsupported negative claim limitation should be rejected. C. Term 3: "pre-processing parameters" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction "values directing the pre-processing" "configurable values directing the preprocessing, as opposed to merely default values" The plan language of Claims 30 and 42 require the pre-processing parameters to be received from a separate device. Thus, to the extent "configurable" means the user PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |5 8 device must use parameters received from a separate device, such a limitation is already explicitly recited in the claim. Adding "configurable" to the meaning of the pre-processing parameters when the claim language already requires receiving the parameters from a separate device is a recipe for confusion because a juror will undoubtedly think configurable must be something different than receiving the parameters from a remote device. Because, the explicit language of the claim already captures the requirement that the parameters are received from a remote device, the redundant addition of configurable should be rejected as unnecessary and confusing. In its response brief, Defendant states its construction adds "as opposed to merely default values" to clarify that the pre-processing parameters cannot be the default settings. Def. Res. Br. at 14. However, Defendant's construction does not explain what is exactly meant by default values. Does it mean the pre-processing parameters must be received from a remote device and cannot be permanently stored values on the user's device, which were not received from a remote device? If so, then the claim language already makes this clear. The parameters must be received from a remote device. Thus, no further construction is necessary. If, however, Defendant is trying to narrow the scope of received pre-processing parameters to only parameters that are always changing, then Defendant's construction must be rejected. There is nothing in the claims requiring the parameters to vary every time an image is to be processed for submission. As long as the parameter is received from a remote device, the claim limitation is satisfied. The number of times the user's device uses the same parameter, which was received from a remote device, is unlimited. PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |6 8 As Judge O'Connor noted, the pre-processing parameters term should be given its full breadth as understood by a person of ordinary skill in the art: [T]he term[] "pre-processing parameters" and "parameter used to control the pre-processing" should be given the full breadth of their ordinary meaning as understood by a person of ordinary skill in the art at the time of the invention. As such, the Court finds that the "pre-processing parameters" and "parameters used to control the pre-processing" mean "values directing the pre-processing." Exh. A. at *37-38; Exh. B, at *26, fn. 8. Accordingly, the Court should reject Defendant's litigation inspired construction and adopt Lupercal's proposed construction, which is identical to the two-prior constructions by Judge O'Connor. D. Term 4: "the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party" (Claims 30, 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and "pre-processing the one or more image ordinary meaning) files using the image submission tool to meet the pre-processing parameters specified by a receiving party, the pre- processing parameters being received by the image submission tool from a device other than the user device while the image submission tool performs a change of the one or more image files from one form to another" The full context of this claim phrase is: PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |7 8 pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party PX-094 at 12:29-35 (Claim 30). causing the image submission tool to pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre- processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party PX-094 at 14:7-15 (Claim 42). The parties' positions principally differ on the following two issues: First, must the remote device send the pre-processing parameters for each individual image? (i.e. the "default" limitation). That is, must the user device receive pre-processing parameters every time an image is processed? Or, is it sufficient that the user device has received pre-processing parameters such that the image can be processed. Second, when must the pre-processing parameter be received? (i.e. the "temporal" limitation). That is, must the parameter be received while the image is being processed? Or, is it sufficient that the parameter is received such time that the parameter is available to control the processing? PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |8 8 With respect to the "default" limitation, in its responsive claim construction brief, Defendant misrepresents Lupercal's position and statements. Specifically, Defendant asserts that "pre-processing parameters previously downloaded and stored on the user device for processing and submission are excluded." Def. Res. Br. at 19. Lupercal disagrees with this proposition and has never suggested such a thing. In an attempt to support its flawed position, Defendant argues: Even Lupercal acknowledged compliance with the receiving party's requirement "every time" as a benefit provided by the alleged 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. Id. at 19-21. This statement does not support Defendant's position. Simply acknowledging that the pre-processed parameters might change over time does not mean the parameters must change every time. In fact, it is likely the parameters may only be sent one time to establish how the images should be pre-processed over time. For example, if several images are to be submitted, the remote device may send parameters establishing the width, height, and image type format for each image (e.g., 640x480 JPG). Thereafter, when the user selects a series of images to be submitted, the same stored parameters would be used to process each of the images with the same size and image type before submission. According to Defendant's tortured construction of the claims, the remote device would be required to needlessly transmit the exact same parameters to the user device while each individual image is being processed. Nothing in the claim requires PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |9 8 such a needless and wasteful operation. The claims are, however, open to the circumstance that if the remote device sent new parameters to the user device, the new parameters could be used to control the processing of the images. Absolutely nothing, however, precludes the image submission tool from using the same pre- processing parameters, which have been received from the remote device, for processing multiple images over time. For example, the claims do not recite receiving a unique pre-processing parameter for each image during a conversion of the image. Instead, the claims simply recite using a pre-processing parameter received from a remote device in order to process the images. There is no time restriction on when the parameter is received, how often the parameter must be received, that the parameter must change in value over time, or that the parameter cannot be stored on the user device for future processing. With respect to the "temporal" limitation, Defendant twists the plain reading of the claim in an attempt to resurrect an argument already rejected by the Federal Circuit. In sum, the district court properly rejected Samsung's argument that the "being provided to" language of claim 38 requires that the pre-processing parameters are provided to the client device during operation of the claimed method. Exh. C at **16-17. In particular, the Defendant asserts the nonsensical position that the patent owner redrafted to claims to include a temporal limitation just months after securing a victory from Federal Circuit that the claims do have such a limitation. PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |10 8 A further analysis of the claim illustrates additional reasons why Defendant's position is nonsensical. According to Defendant's reading, the parameters must be received "during" the preprocessing of the image. However, defendant does not purport to suggest how such processing can begin to occur if the parameters have yet to be received by the user's device. The user's device does not even know what processing function to apply. For example, is the image going to be reformatted from one image format to another? If so, how would such processing begin before knowing what the resultant format would be. Is the image to be resized? If so, how does image resizing begin without knowing the desired final size. Additionally, Defendant's reliance on "in conversion" to suggest the parameters are received during the pre-processing does not fit with the remainder of the claim phrase. In particular, the relevant language in Claim 30 recites: pre-process the one or more images or the one or more replacement images to produce one or more pre-processed images, the pre-processing by the image submission tool controlled by one or more pre-processing parameters received from a device separate from the user device in a conversion of the one or more images or the one or more replacement images as specified for use by a receiving party PX-094 at 12:29-35 (Claim 30). Thus, according to Defendant's logic, the parameters would be received during the conversion of the image or the replacement image. Because the disjunctive "or" is used, the parameters would not be required to be received during the conversion of the initial image, but they could instead be received during the conversion of the replacement image. Such a reading, however, does not make sense. What makes sense is the parameters are received prior to the pre-processing operation PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |11 8 whether it be for the initial image or the replacement image. Nothing in the claim requires, much less suggests, that the parameters would be received after the processing operation has already commenced. E. Term 5: "enabling a user to determine whether the one or more images should be replaced with one or more replacement images" (Claim 30), "enabling a user to determine whether the first image should be replaced with a first replacement image" (Claim 42) Lupercal's Proposed Construction Plains Capital's Proposed Construction No construction necessary (plain and Indefinite ordinary meaning) The full context of this claim phrase is: [G]enerate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images. PX-094 at 12:21-24 (Claim 30) (emphasis added). [C]ausing the image submission tool to generate a visual representation of one or more images, the visual representation enabling a user to determine whether the one or more images should be replaced with one or more replacement images. Id. at 13:44-14:3 (Claim 42) (emphasis added). The cited claim language is simple and straight forward. By generating and displaying the identified image, the image submission tool enables a user to determine whether the image should be replaced. The claim does recite or require the image submission tool itself to make the determination of whether the image should be replaced. PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |12 8 All the claims require is generating a visual representation of the image (e.g. displaying the image) so that the user is able to see the image. Then, the claim provides for the user to be able to replace the image if the user so desires. Thus, as properly read, the scope of the claims is clear. This claim limitation is satisfied if the image submission tool displays a visual representation of the image and then then allows the user to replace the image. The reason why a user may want to replace the image has no bearing on the scope of the claim. The claimed process is similar to a personal computer confirming you want to delete a file before actually deleting it. The computer doesn't know whether or not the file should be deleted. This is why the user is prompted to confirm whether the file should be deleted. If the user wishes to delete the file, the computer deletes it. If not, the computer does not delete it. Similarly, in the claims, the image submission tool verifies whether the user wants to submit the identified image. It does so by visually displaying the image. If the user wishes to replace the image, the image submission tool allows the user to replace it. If the user does not want to replace it, the system doesn't replace it. Simple. Defendant makes two basic arguments as to why the claims are indefinite. First, Defendant asserts there is no objective standard for how to generate a visual representation of an image. Second, Defendant asserts there is no objective standard to determine whether an image is "wrong" or "satisfactory." According to Defendant, the claim is indefinite because "a POSITA [would not] understand how to generate a visual representation [of the image] because there is no objective standard for the visual representation." Def. Res. Br. at 24. There is simply no PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |13 8 support for such an incorrect statement. There are many known standard image formats that define the encoding and decoding of image data (e.g. gif, tiff, jpg, bmp, png, etc). These formats provide objective standards on how to visually represent the underlying image data. By following the standard encoding/decoding standards, a POSITA would be able to generate a visual representation of the image so that it could be displayed on the user's device. Once displayed, the user would be able to visually see the image and then determine whether the user wanted to replace the image. Because a POSITA is aware of known standards for encoding and decoding image data, a POSITA would know how to decode image data such that it could be visually represented to the user. Defendant further asserts the claims are indefinite "[b]ecause no objective standards exist in the '094 Patent for determining whether an image is 'wrong' or 'satisfactory.'" Def. Res. Br. at 24. But nothing in the claim requires the displayed image to be "wrong" or "satisfactory." The claims simply must allow the user to replace the image after the image submission tool displays a representation of the image. There is no condition at all on what images can, must, or cannot be replaced. II. CONCLUSION For these reasons, Lupercal respectfully requests the Court construe the disputed claim terms in accordance with Lupercal's proposed constructions. Dated: December 23, 2019 Respectfully submitted, Raymond W. Mort, III PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |14 8 Texas State Bar No. 00791308 raymort@austinlaw.com THE MORT LAW FIRM, PLLC 100 Congress Ave, Suite 2000 Austin, Texas 78701 Tel/Fax: (512) 865-7950 ATTORNEYS FOR PLAINTIFF PLAINTIFF'S REPLY CLAIM CONSTRUCTION BRIEF PAGE |15