Lupercal LLC v. CitiBank, N.A.

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

BRIEF regarding [38] Brief by Plains Capital Bank.

Interested in this case?

Current View

Full Text

4 UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION LUPERCAL LLC, Case No. 6:19-cv-00201-ADA Plaintiff JURY TRIAL DEMANDED 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 REPLY CLAIM CONSTRUCTION BRIEF 4 Table of Contents I. Introduction ..............................................................................................................................1 II. Discussion.................................................................................................................................3 A. Term 1: "image submission tool" ............................................................................3 1. The "image submission tool" is "a web-based program" ............................3 2. The "image submission tool" is "configured to perform a variable amount of pre-processing" ...........................................................................6 B. Term 2: "pre-process" ..............................................................................................7 C. Term 3: "pre-processing parameters" ....................................................................10 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" ................11 1. "Received. . . in a conversion" defines a temporal limitation...................11 2. A "conversion" is "a change. . . from one form to another" .....................12 E. Term 5: "enabling a user to determine whether the one or more image should be replaced with one or more replacement image" ....................................13 III. Conclusion ..............................................................................................................................15 i 4 Table of Authorities Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007) .............................................................................................. 4, 9 Bell & Howell Document Management Products Co. v. Altek Systems, 132 F.3d 701 (Fed. Cir. 1997) .................................................................................................... 6 Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374 (Fed. Cir. 2006) .................................................................................................. 4 Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) .......................................................................................... 14, 15 Decisioning.com, Inc. v. Federated Department Stores, Inc., 527 F.3d 1300 (Fed. Cir. 2008) .................................................................................................. 2 Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322 (Fed. Cir. 2009) ................................................................................................ 10 Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) .................................................................................................. 9 Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019) .................................................................................................. 3 Intellectual Ventures I LLC v. T-Mobile USA, Inc, 902 F.3d 1372, 1381 (Fed. Cir. 2018) ...................................................................................... 14 InterDigital Communications, Inc. v. ITC, 601 F. App'x 972 (Fed. Cir. 2015) ......................................................................................... 3, 4 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) .................................................................................... 13, 14, 15 Kraft Foods, Inc. v. International Trading Co., 203 F.3d 1362 (Fed. Cir. 2000) .............................................................................................. 5, 6 Medicines Co. v. Mylan, Inc., 853 F.3d 1296 (Fed. Cir. 2017) .............................................................................................. 1, 2 Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313 (Fed. Cir. 2005) .................................................................................................. 6 Multiform Desiccants Inc. v. Medzam, Ltd., 133 F.3d 1473 (Fed. Cir. 1998) .................................................................................................. 5 ii 4 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) ............................................................................................................ 14, 15 Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) .................................................................................................. 7 Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005) ................................................................................................ 10 O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 135 (Fed. Cir. 2008) .................................................................................................. 12 Pass & Seymour, Inc. v. ITC, 617 F.3d 1319 (Fed. Cir. 2010) .................................................................................................. 9 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 2 Retractable Techs., Inc. v. Becton, Dickinson, & Co., 653 F.3d 1296 (Fed. Cir. 2011) .......................................................................................... 2, 5, 9 SanDisk Corp. v. Kingston Technology Co., 695 F.3d 1348 (Fed. Cir. 2012) .............................................................................................. 4, 9 Seachange International, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) .............................................................................................. 5, 9 Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O, 2015 U.S. Dist. LEXIS 179647 (N.D. Tex. Mar. 21, 2015) ....................................................... 3 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) ....................................................... 3 Summit 6, LLC v. Samsung Electronics Co. 802 F.3d 1283 (Fed. Cir. 2015) ................................................................................................ 12 Techtronic Industries Co. v. ITC, No. 2018-2191, 2019 U.S. App. LEXIS 36723 (Fed. Cir. Dec. 12, 2019) ................................................... 1, 2, 5 Thermal/Acoustical, Inc. v. Federal-Mogul Corp., 344 F. App'x 607 (Fed. Cir. 2009) ............................................................................................. 5 Trustees of Columbia University v. Symantec Corp., 811 F.3d 1359 (Fed. Cir. 2016) .................................................................................................. 7 VirnetX, Inc. v. Cisco System, 767 F.3d 1308 (Fed. Cir. 2014) .................................................................................................. 9 iii 4 Wireless Agents LLC v. Sony Ericsson Mobile Communications AB, 189 F. App'x 965 (Fed. Cir. 2006) ............................................................................................. 3 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) 1 Exhibits PC01 to PC23 were filed with PlainsCapital Bank's Opening Claim Construction Brief on November 15, 2019 (ECF Nos. 35-1 to 35-23), and PC24 was filed with PlainsCapital Bank's Responsive Claim Construction Brief on December 10, 2019 (ECF Nos. 37-1). v 4 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) 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) Ex. PC25 McGraw-Hill Computer Desktop Encyclopedia at 1053 ["Web-based application"] (9th ed. 2001) Ex. PC26 Microsoft Press Computer User's Dictionary 142 ["File"] (1st ed. 1998) Ex. PC27 Supplemental Declaration of Stephen Gray ("Gray Suppl. Decl.") Ex. PC28 U.S. Patent No. No. 6,895,557 to Wood et al. ("the '557 patent") vi 4 I. INTRODUCTION Lupercal wrongly accuses PlainsCapital of proposing "narrow limitations that are unsupported by the intrinsic record." ECF No. 38, Pl.'s Resp. Cl. Constr. Br. 1 ("Pl. Resp."). For "image submission tool" Lupercal's responsive brief does not address the '094 patent's limiting statements or any of the Federal Circuit cases holding that such statements limit the claims' scope as discussed in PlainsCapital's opening brief. Compare Pl. Resp., with ECF No. 35, Def.'s Opening Cl. Constr. Br. 2-6, 9-10, 11-15 ("Def. Br."). Lupercal also wrongly asserts that the invention's "important," "key," and "require[d]" features are merely "preferred, but non-limiting, embodiments." Pl. Resp. 1. The Federal Circuit rejected this argument, explaining that the scope of claim terms can be limited to a feature described in the specification, even if the specification expressly characterized it as "non-limiting." Medicines Co. v. Mylan, Inc., 853 F.3d 1296, 1306 (Fed. Cir. 2017). Here, the '094 patent is even more limiting, describing features as "important," "key," "require[d]," and the "present invention," thus limiting the claims. '094 patent, 2:24-46; Def. Br. 1, 5, 14-15; Def. Resp. 4, 10-11. On December 19, 2019, the Federal Court again rejected arguments similar to Lupercal's in Techtronic Industries Co. v. ITC, No. 2018-2191, 2019 U.S. App. LEXIS 36723 (Fed. Cir. Dec. 12, 2019). In Techtronic, the Federal Circuit rejected the assertion that "words or expressions of manifest exclusion or restriction" are required for disclaimer, the same argument Lupercal makes here. Pl. Resp. 1. The Federal Circuit held that "where the specification describes the present invention as having [a] feature, that representation may disavow contrary embodiments" and the "disavowal. . . need not be explicit." Id., at *10-11 (alternation in original) (internal quotation marks omitted). Put in context, Techtronic found that where "the entire specification focuse[d] on enabling placement of the passive infrared detector in the wall console, . . . repeatedly set forth as the objective of the invention," and "consistently represent[ed] the invention" as having this 1 4 particular feature, the patent "thus effected a disavowal of alternative[s]" "even without an express concession to that effect." Id., at *15. Here, the '094 patent's background, detailed description, appendix, and figures repeatedly describe specific features as "important," "key," or "require[d]" for the "present invention" to purportedly solve prior art problems, making clear that—like Techtronic—the patent requires a "web-based" "image submission tool" and disavows non-web-based alternatives, as explained in PlainsCapital's briefs. '094 patent, 1:29-54, 1:62-65, 2:24-25, 2:35-38, 2:47-3:14, 4:49-50; see also Def. Br. 9-14; ECF No. 37, Def.'s Resp. Cl. Constr. Br. 5-9 ("Def. Resp."). Lupercal's attempt to broaden the claims based on claim differentiation with related patents having different claim language was also rejected by Techtronic, which explained that "the fact that [patent owner] obtained more modest claims in its parent patent does not inoculate it from the specification's disavowal." Techtronic, 2019 U.S. App. LEXIS 36723, at *16. Lupercal accuses PlainsCapital of "putting the claim construction cart [specification] before the horse [claims]" (Pl. Resp. 2), but this idiom is inapt because claims must be viewed "in light of" and "fully integrated" with the specification, not in isolation. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (citations omitted). The claims and specification must be taken together, not separately, and Lupercal gives no reason to depart from this well- established doctrine. See Def. Br. 4-6; Def. Resp. 5 (citing Medicines Co., 853 F.3d at 1309; Retractable Techs., Inc. v. Becton, Dickinson, & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011); Decisioning.com, Inc. v. Federated Dep't Stores, Inc., 527 F.3d 1300, 1308 (Fed. Cir. 2008); Phillips, 415 F.3d at 1315. Lupercal mistakenly resorts to the patent's boilerplate language for alleged "words of manifest inclusion" (Pl. Resp. 1-2); boilerplate language carries little to no weight in claim 2 4 construction. Lupercal's assertion should be rejected. Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352 (Fed. Cir. 2019) (finding boilerplate language does not overcome disclaimer in specification); see also InterDigital Commc'ns, Inc. v. ITC, 601 F. App'x 972, 980 (Fed. Cir. 2015) (non-precedential) (finding that boilerplate language "that the invention may be practiced with modifications to the embodiment" could not broaden the scope beyond the specification); Wireless Agents LLC v. Sony Ericsson Mobile Commc'ns AB, 189 F. App'x 965, 967 (Fed. Cir. 2006) (non-precedential) (boilerplate language cannot overcome specification statements that "make[] clear that the invention does not include a particular feature"). II. DISCUSSION A. Term 1: "image submission tool" 1. The "image submission tool" is "a web-based program" Lupercal's reliance on Judge O'Connor's prior constructions of "pre-processing"—a different claim term (Pl. Resp. 3-4)—is inapt because it does not bear on the construction of "image submission tool." See Summit 6 LLC v. Research in Motion Corp., No. 3:11-cv-367-O, 2012 U.S. Dist. LEXIS 186414, at *21 (N.D. Tex. May 21, 2012) ("RIM"); Summit 6 LLC v. HTC Corp., No. 7:14-cv-00014-O, 2015 U.S. Dist. LEXIS 179647, at *30 (N.D. Tex. Mar. 21, 2015) ("HTC"). The parties in the two Summit 6 cases disputed whether the claimed "pre-processing" must occur "in a browser," not whether the "image submission tool" is "web-based." Pl. Br. 3-4 (quoting RIM, 2012 U.S. Dist. LEXIS 186414, at *21; HTC, 2015 U.S. Dist. LEXIS 179647, at *30). Thus, Judge O'Connor's determination did not involve the issue of whether the "image submission tool" is web-based. See id. Because Judge O'Connor neither addressed the term "image submission tool" nor considered the specification's disavowal of a non-web-based "image submission tool," the prior "pre-processing" constructions do not refute PlainsCapital's proposed construction of "image submission tool." 3 4 Lupercal, relying on the "limited tool" of claim differentiation, argues that "the claims of the '094 were deliberately drafted to not be limited to 'web pages' . . . to broaden the scope of the application of the image processing," based on the independent claims of the related U.S. Patent No. 6,895,557 (Ex. PC28). Pl. Resp. 4; see Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378 (Fed. Cir. 2006). But claim differentiation typically applies only when the limitation being read into an independent claim is the only difference between the claims being compared. See, e.g., SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348, 1361 (Fed. Cir. 2012); Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1370 (Fed. Cir. 2007); InterDigital Commc'ns., 601 F. App'x at 979. Claim differentiation does not apply here because the '557 patent's claims are not identical to the '094 patent's, but for "web-based." The '557 patent's claims do not even include the term "web-based," "tool," "submission tool," or "image submission tool" and thus do not relate to the proper construction of the term at issue here. See Ex. PC28, 9:22-14:54. Lupercal also incorrectly applies claim differentiation by equating the term "web pages" in the '557 patent with "web-based" (Pl. Resp. 4), but PlainsCapital's construction here does not require "web pages." Def. Br. 9-10. The '557 patent claims a method acting on "web pages" by reciting "accessing a web site," "acquiring a media object with a web page," "pre-processing. . . for the requirements of the third-party web site," etc. '557 patent, 9:23-14:54. While those claims are directed to "web pages," that has no bearing on whether "image submission tool"—which does not appear in the '557 patent's claims—is a "web-based program," which includes non-web- page examples, such as ActiveX components, Java applets, or Java scripts, etc., as explained in the '094 patent. '094 patent, 1:52-54; 2:24-25; 3:23-51; 5:26-28; 6:37-42; see also Def. Resp. 5 ("The '094 patent clearly characterizes the 'invention' as a 'web-based program' and describes a 4 4 web-based program in every embodiment (i.e., ActiveX control, Java applet, JavaScript, VBScript)."); Def. Br. 10-11. Lupercal's claim differentiation argument (Pl. Resp. 4) is also inapposite because the specification's disclaimer that certain features define the "present invention" as "important[]" and "require[d]" overcomes any presumption of differentiation. Techtronic, 2019 U.S. App. LEXIS 36723, at *16 (citing Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)); see also Retractable Techs., 653 F.3d at 1305 (holding that description of "the invention" in the specification overcomes claim differentiation); Thermal/Acoustical, Inc. v. Federal-Mogul Corp., 344 F. App'x 607, 615-16 (Fed. Cir. 2009) (non-precedential) (holding that claim was limited to two-sided needling even though not expressly recited in claim because all embodiments and "present invention" described two-sided needling). The correct construction of "image submission tool" is a "web based" program (Def. Br. 10-11), which is consistent with McGraw-Hill Computer Desktop Encyclopedia, which defines "web-based application" as "[a]n application that is downloaded from the Web each time it is run" and includes the same advantages as the '094 patent—ensuring compliance with server requirements. Ex. PC25 at 1053 ("The advantage is that the application can be run from any computer, and the software is routinely upgraded and maintained by the hosting organization rather than each individual user"); Ex. PC27 ("Gray Suppl. Decl.") ¶¶ 14-15. Thus, even if "image submission tool" is broader than "web pages" alone (Pl. Resp. 4), it cannot not be construed to cover non-web-based applications. Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000) ("Claim differentiation can not broaden claims beyond their correct scope.") (quoting Multiform Desiccants Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)). 5 4 2. The "image submission tool" is "configured to perform a variable amount of pre-processing" Lupercal asserts that "image submission tool" should not be construed to include "configured to perform a variable amount of intelligent preprocessing on media object such as images prior to upload" because this would limit "pre-processing" (Pl. Resp. 4-5). Contrary to Lupercal's assertion, PlainsCapital's construction of "image submission tool" does not limit the claims to any "particular pre-processing." Pl. Resp. 5; see Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). The '094 patent defines the scope of its "image submission tool" as configured to perform a "variable amount" of pre-processing, and Lupercal agrees the "image submission tool" is related to "pre-processing" because it performs the "pre-processing" required by the claims. Pl. Resp. 4. Construing one term to include another claim term is not improper, nor does it render that construction "superfluous." Kraft Foods, 203 F.3d at 1369. Rather, referring to other terms helps "mutually reinforc[e]" the understanding of the claim. Id. at 1368 (citing Bell & Howell Doc. Management Prods. Co. v. Altek Sys., 132 F.3d 701, 707 (Fed. Cir. 1997)). Lastly, Lupercal's argument against construing "image submission tool" to include "intelligent" pre-processing (Pl. Resp. 5) is contrary to the '094 patent's specification. The '094 patent, not PlainsCapital, defined "intelligent preprocessing" as an "important[]" feature of the invention when describing the claimed "image submission tool." '094 patent, 2:35-38. Thus, Lupercal's assertion that "intelligent" should be addressed only in the context of the separate "pre-processing" term is not grounded in the intrinsic record and, therefore, does not rebut PlainsCapital's construction. Pl. Resp. 5; Def. Br. 14-15. 6 4 B. Term 2: "pre-process" For "pre-process[ing]," the parties agree that the claimed "image" cannot be "raw digital data" or temporary images. See, e.g., Pl. Resp. 6-8; Def. Br. 17-18 (distinguishing raw image data with "compressed" and "stored" images); see also Def. Resp. 13. Lupercal concedes that the claimed "image" is a "formatted image. . . as opposed to the raw digital [image] data." Pl. Resp. 6 (emphasis added). The parties' dispute thus centers on whether the claimed "image" is a stored image file. Pl. Resp. 7-8. Lupercal argues that the "where and how an image is stored has no import." Pl. Resp. 8. (emphasis added). But this is belied by intrinsic record explaining that the image must be stored in memory and does not include temporary files. See Def. Br. 16-18; Def. Resp. 11-12. An "image," as used by the '094 patent, means an "image file," which is an "image stored on the user device," and does not include raw image data or an image that had not been stored on the user device. Gray Suppl. Decl. ¶¶ 18; see also id. at ¶¶ 19-22 (citing '094 patent, 3:23-24, 3:34-43, Figs. 1, 3-4; Ex. PC26 at 142, Microsoft Press Computer User's Dictionary (1st ed. 1998)). Claims must be construed in light of the specification because the specification is "[t]he only meaning that matters in claim construction." Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). Claims "do not have meaning removed from the context from which they arose." Id. (quoting Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001)). Lupercal's arguments fail because they are not supported by the '094 patent, and PlainsCapital's construction explaining that the pre-processed "image" is an "image file"—to differentiate from raw image data or images not stored on the user device —is correct. Gray Suppl. Decl. ¶¶ 18, 20-21. Lupercal's assertion that PlainsCapital takes an "overly narrow view of 'image'" (Pl. Resp. 6) ignores the specification. For instance, the specification describes that "[t]here are two ways media objects. . . become associated with the media object identifier," both of which act on 7 4 "files." '094 patent, 3:23-43. The first way is "through a drag and drop" of a previously stored file. '094 patent, 3:24-25. Fig. 1 instructs the user to "locate the folder on [their] computer containing [their] photos, and then drag them into the boxes." '094 patent, Fig. 1. These photos stored in the folder are image files. Gray Suppl. Decl. ¶ 22. The second way is by "brows[ing] for media object[s]," where a user "choos[es] a file to be opened, either by graphical navigation or by specifying a path name." '094 patent, 3:34-43 (emphasis added). A POSITA would have understood that in both cases, the '094 patent describes searching for images stored on the user device in non-volatile memory, where the "images"—as used in the specification and the claims—are "files," not images that have not been stored on the user device. Gray Suppl. Decl. ¶¶ 20-22 (citing '094 patent, 3:34-43; 5:50-57, Figs. 3-4); see also Def. Br. 18 (citing Ex. PC08 at 15, 31-32 (distinguishing prior art as not disclosing "processing of image files" because manipulating "raw image data. . . before initially being saved in general purpose memory" did not constitute "how to process an existing image file") (emphases added); Ex. PC07; Ex. PC09 at ¶¶ 110,146 (prior art did not teach pre-processing an "image" because "[b]efore the image data is stored as an addressable file in general purpose memory, the data is merely raw data") (emphasis added)). Lupercal's argument that the "the images are not stored as a file with a filename when stored in the media object identifier" (Pl. Resp. 6-7) is wrong because PlainsCapital's construction does not require a file name (Def. Br. 15). Pl. Resp. 6-7. Nevertheless, '094 patent contradicts Lupercal's assertion because the image associated with the media object identifier does have a file name. For instance, the '094 patent explains that "[i]t is important that each submitted image have a unique name," and that "all media object within a submission" include a "value that determines the filename of the resulting image." '094 patent, 5:50-57 (emphases added); see also 8 4 '094 patent, Fig. 3 (identifying each image in the media object identifier by its filename— "DragImage1"). Thus, the intrinsic record refutes Lupercal argument that the "image" being pre- procesed is not an image file. Lupercal argues that "image file" in dependent claims 31 and 43 means that the pre- processed "image" in independent claims 30 and 42 is not an "image file" (Pl. Resp. 7), but Lupercal is wrong that claim differentiation precludes limiting "pre-processing" to "image file[s]" because claim differentiation does not apply where the limitation recited in the dependent claim is not present in the independent claim. See Pass & Seymour, Inc. v. ITC, 617 F.3d 1319, 1326 (Fed. Cir. 2010); see also SanDisk, 695 F.3d at 1361; Andersen, 474 F.3d at 1370. Dependent claims 31 and 43 recite that the visual representation is generated "from an image file" ('094 patent, 12:43- 46, 14:20-21), while independent claims 30 and 42 recite pre-processing the underlying stored image, which is an image file. '094 patent, 12:28-30, 14:7-9. Independent claims 30 and 42 do not say anything about what the visual representation is generated "from" and thus PlainsCapital's construction of "image" does not violate the presumption of claim differentiation. Pass & Seymour, 617 F.3d at 1325. Moreover, Lupercal is wrong because claim differentiation is merely a presumption, that—to the extent it may apply—is overcome by the '094 patent specification, which describes an "image" as an "image file." Different terms in separate claims may be construed the same where the intrinsic record indicates that those terms have the same meaning. VirnetX, Inc. v. Cisco Sys., 767 F.3d 1308, 1316-17 (Fed. Cir. 2014); see also Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1323 (Fed. Cir. 2011); Techtronic, 2019 U.S. App. LEXIS 36723, at *16 (citing Seachange Int'l, 413 F.3d at 1369; Retractable Techs., 653 F.3d at 1305. Here, notwithstanding that "image file" is used in the dependent claims in a different context, the specification describes 9 4 pre-processing an "image" only as an image "file." '094 patent, 2:29-32 ("[T]he tool provides the user and opportunity to confirm the submission. . . for example by generating a thumbnail image of the rich media file."); see Nystrom v. TREX Co., 424 F.3d 1136, 1143-46 (Fed. Cir. 2005);; Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir. 2009). C. Term 3: "pre-processing parameters" The parties dispute whether "configurable" in PlainsCapital's construction is necessary to clarify the scope of "pre-processing parameters." Pl. Resp. 8-11. Lupercal is incorrect that "'configurable' is unnecessary" and "should be rejected." Pl. Resp. 9-10. "[C]onfigurable" in PlainsCapital's construction clarifies that any existing default settings on the user device are not "pre-processing parameters." Def. Br. 19-21. Pre-processing parameters, according to the patent, "override" any default settings. '094 patent, 5:29-30; see Def. Br. 21 (citing '094 patent, 5:10-14, 5:29-30; Ex. PC23, ¶¶ 102-104 ("Gray Decl.")). Indeed, "pre-processing parameters" cannot be default settings on the user device because prior art media submission tools allowed users to transfer files using the user device's default settings but did not further "'back-end' automation." See '094 patent, 1:59-62, 2:1-6, 4:55-5:7; Pl. Resp. 9; see also Def. Resp. 14. "[R]eceiv[ing]" "from a separate device" is also not duplicative of "configurable" values, contrary to Lupercal's assertion (Pl. Resp. 9) because "default settings" do not provide 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." Def. Br. 21 (citing '094 patent, 2:35-38, 4:55- 59, 4:49-50, 5:4-7; Gray Decl. ¶¶ 102-105). If a value on the user's device cannot be overridden or changed, it is not "configurable," as described in the '094 patent ('094 patent, 5:29-30), even if it was originally received from another device. See Def. Br. 20-21; Def. Resp. 14. Lupercal's argument that "nothing requir[es] that the parameters change over time" is misplaced. Pl. Resp. 10. PlainsCapital's construction of "pre-processing parameters" does not 10 4 require that the "configurable" values necessarily change over time, only that they can override existing default setting on the user's device. '094 patent, 5:29-30. As explained in PlainsCapital's responsive brief, because 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. Def. Resp. 15. 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 any existing default settings on the user device ensures that images are not pre-processed using outdated or incompatible default settings. Def. Resp. 15 (citing '094 patent, 3:7-9). Because the language "as opposed to merely default values" in PlainsCapital's construction clarifies the distinction between "configurable values" and "default values," it is necessary. Def. Br. 21-22 (citing Gray Decl. ¶¶ 103-106). 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" The parties dispute whether this term includes a temporal limitation. PlainsCapital identifies "received. . . in a conversion" as temporal (Def. Br. 26-27), which Lupercal does not address in its responsive brief. The parties also dispute the meaning of "conversion." PlainsCapital asserts that "in a conversion" modifies the context in which the pre-processing parameters are received by the image submission tool (Def. Br. 25-28 (citing Gray Decl. ¶¶ 119- 123)), which Lupercal also does not address. 1. "Received. . . in a conversion" defines a temporal limitation Lupercal does not address PlainsCapital's argument that "received. . . in a conversion" is a temporal limitation. Pl. Resp. 11; see Def. Br. 26-27 ("The term 'in a conversion,' when viewed 11 4 from a temporal context, refers to when the pre-processing parameters are received by the image submission tool." (citing Gray Decl. ¶ 120)). Lupercal's opening and responsive briefs, in fact, do not discuss "received. . . in a conversion" at all. Instead, Lupercal repeats the same incorrect argument from its opening brief—that the Federal Circuit's prior construction of the term "being provided to" in a related patent does not include a temporal limitation. Compare Pl. Resp. 22 (citing Summit 6, LLC v. Samsung Elecs. Co. 802 F.3d 1283, 1291-92 (Fed. Cir. 2015) ("Samsung")), with Pl.'s Opening Cl. Constr. Br. 15 ("Pl. Br.") (same). But Lupercal's point is irrelevant. Def. Resp. 21-22. The claim at issue in Samsung did not include the phrase "received. . . in a conversion" recited in the '094 patent. This additional language of the '094 patent claims must be given meaning, and Lupercal attempts to read it out. Pl. Resp. 11-12. Therefore, the Federal Circuit's finding that the term "being provided to" did not include a temporal limitation is not relevant and does not address whether "received. . . in a conversion" is temporal. Because Lupercal's responsive brief does not dispute PlainsCapital's interpretation of "received. . . in a conversion," the Court should adopt PlainsCapital's construction. 2. A "conversion" is "a change. . . from one form to another" Lupercal does not dispute that the plain meaning of "conversion" is "a change of the one or more image files from one form to another." Pl. Resp. 12 ("Defendant's citation to a standard dictionary illustrates this term has a plain and ordinary meaning to a person of ordinary skill in the art. . ."). Because Lupercal does not dispute this plain and ordinary meaning—only whether it should be included—it is proper to provide it to a jury to facilitate their understanding. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Lupercal argues PlainsCapital's construction is "overly narrow," but Lupercal misunderstands that "a change. . . from one form to another" relates to "conversion," not "pre- 12 4 processing," which is a different disputed term. Pl. Resp. 12-13. PlainsCapital's opening brief explains that "a change. . . from one form to another" corresponds to "conversion" and refers to a specific type of pre-processing—a conversion—during which the pre-processing parameters are received. Def. Br. 27-28. The scope of "pre-process[ing] . . . images to produce. . . pre-processed images," however, may include other types of pre-processing in addition to a "conversion," but that does not broaden the meaning of "conversion." See Def. Resp. 22; see Def. Br. 16-17 ("conversion" is a specific type of processing distinct from "reformatting a file," compressing," "altering image quality," "cropping," etc.) (citing '094 patent, 4:59-5:3; Gray Decl. ¶ 81). Thus, Lupercal's argument that PlainsCapital's construction of "conversion" narrows that scope of pre- processing operation is misplaced. Pl. Resp. 12-13. Lupercal's other arguments related to "the pre-processing operation"—"claim differentiation" and "reformatting an image file"—are based on this same flawed premise that "in a conversion" limits the scope of "pre-process[ing]," which is a separate term and thus also fail. Id. Lupercal does not dispute that PlainsCapital's construction is consistent with the plain and ordinary meaning of "conversion." See Pl. Resp. 12. The court should therefore adopt PlainsCapital's construction. O2 Micro, 521 F.3d at 1361. E. Term 5: "enabling a user to determine whether the one or more image should be replaced with one or more replacement image" Lupercal asserts that "no construction [is] necessary" (Pl. Resp. 13), yet it then construes "visual representation" and "should be replaced" to mean "preview" and "if a wrong or mistaken image has been selected," respectively. Pl. Resp. 14. Even if Lupercal could ascribe some meaning to this term, that does not make the claim's boundaries definite. See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). The parties' dispute is not whether some 13 4 point within the boundaries can be identified (Pl. Resp. 13-15), but whether the "objective boundaries" can be discerned with "reasonable certainty." Interval Licensing, 766 F.3d at 1371. Claims are ambiguous when the specification provides no indication of those outer boundaries, and "such ambiguity falls within the innovation-discouraging zone of uncertainty against which the Supreme Court has warned." Id. at 1374 (internal quotation marks omitted) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 (2014)). The claims are thus indefinite. In Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit found that the term "optimiz[ing] . . . QoS" was indefinite as a "term of degree" because "the 'QoS requirements' are entirely subjective and user-defined" and fail to provide "any way to determine whether QoS has been 'optimiz[ed].'" 902 F.3d 1372, 1381 (Fed. Cir. 2018) (emphasis added) (citing Datamize LLC v. Plumtree Software, Inc., 417 F. 1342, 1350-51 (Fed. Cir. 2005)); see also Def. Resp. 22-24. Lupercal similarly argues that the requirement for replacing the image is based on what a particular user subjectively believes is "wrong" or "mistaken" after "visually seeing the preview." Pl. Resp. 14-15; see also Pl. Br. 17 (further arguing for a subjective standard based on user "satisfaction"). But whether the user can "visually see[] the preview" (Pl. Resp. 14) does not provide the required objective standard for whether an image should be replaced. The claims are thus indefinite because the '094 patent provides no objective standard for whether an image is "wrong," "mistaken," or "satisfactory," and instead, leaves that determination to the unpredictable vagaries of a user's opinion. Def. Br. 22-23; Def. Resp. 23-24. The vagueness is manifest. Would a visual representation that is highly pixilated or fuzzy enable a user to determine whether a "wrong," "mistaken," or "satisfactory"? How large must a visual representation be for the user to "visually see" whether the image is "wrong," or "mistaken," or "satisfactory"? Would a preview of only a top half-portion of an image be 14 4 sufficient for making the claimed determination? None of these questions can be answered by the claim, the specification, or the prosecution history. See Nautilus, 572 U.S. at 901. Because determining a "wrong," "mistaken," or "satisfactory" image depends on the "unrestrained, subjective opinion of a particular individual purportedly practicing the invention," the claims fail to inform a POSITA with "reasonable certainty" of the scope of a "visual representation [that] enable[es] a user to determine whether the one or more image should be replaced with one or more replacement image the invention." Def. Resp. 23 (citing Datamize, 417 F.3d at 1350); Def. Resp. 24 (citing Def. Br. 29-30; Gray Decl. ¶ 128). Further, Lupercal argues that the terms in Interval Licensing and Datamize were indefinite because "[b]ased on the intrinsic evidence. . . these terms were not sufficiently clear" (Pl. Resp. 15), but that argument is inapposite. The terms were indefinite because neither specification provided any objective way to determine whether the respective term was satisfied, not because of a lack of some meaning for the claim term. See Interval Licensing, 766 F.3d at 1373-74 (finding the term "unobtrusive manner" indefinite despite the specification providing an example of an "unobtrusive" display because "a skilled artisan is still left to wonder what other forms of display are unobtrusive"); Datamize, 417 F.3d at 1350 (rejecting arguments that "subjective terms are permissible so long as one of ordinary skill in the art would understand their scope" because the claim term "[did] not just include a subjective element, it [was] completely dependent on a person's subjective opinion"). Like in Interval Licensing, Datamize, and Intellectual Ventures I, claims 30 and 42 "fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention" and are indefinite. Nautilus, 572 U.S. at 901. III. CONCLUSION The Court should adopt PlainsCapital's constructions of all disputed terms and also find claims 30 and 42 indefinite. 15 4 Dated: December 23, 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 16 4 CERTIFICATE OF SERVICE I hereby certify that on the 23th 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 17