Lupercal LLC v. CitiBank, N.A.

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

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1 Caution As of: November 13, 2019 3:41 PM Z A Summit 6 LLC v. Research in Motion Corp. United States District Court for the Northern District of Texas, Dallas Division May 21, 2012, Decided; May 21, 2012, Filed Civil Action No. 3:11-cv-367-O Reporter 2012 U.S. Dist. LEXIS 186414 * Smith PC, Austin, TX; John B Campbell, McKool Smith, Austin, TX. SUMMIT 6 LLC, Plaintiff, v. RESEARCH IN MOTION For Research In Motion Corporation, Defendant: CORPORATION, et al., Defendants. Thomas M Melsheimer, LEAD ATTORNEY, Carl E Bruce, Scott Cashion Thomas, Fish & Richardson, Subsequent History: Summary judgment granted, in Dallas, TX; Bret Thomas Winterle, Michael Andrew part, summary judgment denied, in part by Summit 6 Bittner, Robert Charles Earle, Thomas H Reger, II, Fish LLC v. Research in Motion Corp., 2013 U.S. Dist. LEXIS & Richardson PC, Dallas, TX; Charles Everingham, IV, 15761 (N.D. Tex., Feb. 6, 2013) Akin Gump Strauss Hauer & Feld LLP, Longview, TX; Motions ruled upon by, Judgment entered by Summit 6 John R Emerson, Haynes & Boone LLP, Dallas, TX. LLC v. Research in Motion Corp., 2013 U.S. Dist. LEXIS For Research in Motion Limited, Defendant: Thomas M 95164 (N.D. Tex., June 26, 2013) Melsheimer, LEAD ATTORNEY, Carl E Bruce, Scott Cashion Thomas, Fish & Richardson, Dallas, TX; Motion denied by Summit 6 LLC v. Research in Motion Charles Everingham, IV, Akin Gump Strauss Hauer & Corp., 2013 U.S. Dist. LEXIS 190249 (N.D. Tex., Aug. Feld LLP, Longview, TX; John R Emerson, Haynes & 7, 2013) Boone LLP, Dallas, TX; Michael Andrew Bittner, Robert Charles Earle, Thomas H Reger, II, Fish & Richardson Amended by, Costs and fees proceeding at, Motion PC, Dallas, TX. granted by Summit 6 LLC v. Research in Motion Corp., 2013 U.S. Dist. LEXIS 190250 (N.D. Tex., Aug. 7, 2013) For Samsung Electronics Co Ltd, Samsung [*2] Telecommunications America LLC, Defendants: Motion for new trial denied by Summit 6 LLC v. Brian K Erickson, LEAD ATTORNEY, Todd S Patterson, Research in Motion Corp., 2013 U.S. Dist. LEXIS DLA Piper LLP (US), Austin, TX; Andrew P Valentine, 190253 (N.D. Tex., Aug. 7, 2013) Chang Kim, PRO HAC VICE, Krista Anne Celentano, PRO HAC VICE, Mark D Fowler, PRO HAC VICE, DLA Costs and fees proceeding at, Objection overruled by, in Piper LLP (US), East Palo Alto, CA; Claudia Wilson part, Objection sustained by, in part Summit 6 LLC v. Frost, DLA Piper LLP, Houston, TX; Erik Fuehrer, DLA Research in Motion Corp., 2013 U.S. Dist. LEXIS Piper US LLP, East Palo Alto, CA; James R Nelson, 194308 (N.D. Tex., Nov. 26, 2013) DLA Piper US LLP, Dallas, TX. For Multiply, Inc., Defendant, Counter Claimant: Eric H Related proceeding at Summit 6 LLC v. HTC Corp., Findlay, LEAD ATTORNEY, R Brian Craft, Findlay Craft, 2014 U.S. Dist. LEXIS 126800 (N.D. Tex., Sept. 10, Tyler, TX. 2014) For Facebook, Inc., Defendant: Deron R Dacus, LEAD Counsel: [*1] For Summit 6 LLC, Plaintiff: Theodore ATTORNEY, The Dacus Firm, P.C., Tyler, TX; Amy R Stevenson, III, LEAD ATTORNEY, Douglas A Cawley, Lemyre, PRO HAC VICE, Kirkland & Ellis LLP, San Richard Alan Kamprath, McKool Smith, Dallas, TX; Francisco, CA; Chanson Chang, PRO HAC VICE, Ashley N Moore, Mitchell Reed Sibley, Phillip M Christopher R Nalevanko, PRO HAC VICE, Corey J Aurentz, McKool Smith PC, Dallas, TX; Bradley W Manley, PRO HAC VICE, Jason M Wilcox, PRO HAC Caldwell, Caldwell Cassady Curry, P.C., Dallas, TX; VICE, John E Dubiansky, PRO HAC VICE, Jonathan D James Quigley, Kathy H. Li, Kevin L Burgess, McKool Brightbill, PRO HAC VICE, Kirkland & Ellis LLP, 1 2012 U.S. Dist. LEXIS 186414, *2 Washington, DC; Gregg F LoCascio, PRO HAC VICE, Reed Sibley, Phillip M Aurentz, McKool Smith PC, Kirkland & Ellis, Washington, DC; Michael K Hurst, Dallas, TX; Bradley W Caldwell, Caldwell Cassady Gruber Hurst Johansen & Hail LLP, Dallas, TX. Curry, P.C., Dallas, TX; John B Campbell, McKool Smith, Austin, TX. For Photobucket Corp., Defendant, Counter Claimant: Dan Duncan Davison, LEAD ATTORNEY, Miriam L Judges: Reed O'Connor, UNITED STATES DISTRICT Quinn, Fulbright & Jaworski, Dallas, [*3] TX; Brandy JUDGE. Shannell Nolan, Fulbright & Jaworski LLP, Dallas, TX; Richard S Zembek, Fulbright & Jaworski LLP, Houston, Opinion by: Reed O'Connor TX. For Samsung Electronics Co Ltd, Samsung Opinion Telecommunications America LLC, Counter Claimants: Brian K Erickson, LEAD ATTORNEY, Todd S Patterson, DLA Piper LLP (US), Austin, TX; Andrew P Valentine, Chang Kim, PRO HAC VICE, Mark D Fowler, PRO HAC CLAIM CONSTRUCTION ORDER VICE, DLA Piper LLP (US), East Palo Alto, CA; Claudia Wilson Frost, DLA Piper LLP, Houston, TX; Erik Before the Court are Plaintiff Summit 6 LLC's ("Plaintiff") Fuehrer, DLA Piper US LLP, East Palo Alto, CA; James Opening Claim Construction Brief, with appendix in R Nelson, DLA Piper US LLP, Dallas, TX;. support [*5] (ECF Nos. 106, 113); Defendants Facebook, Inc., Photobucket Corp., and Multiply, Inc.'s For Summit 6 LLC, Counter Defendant: Theodore (collectively, the "Web Defendants") Responsive Claim Stevenson, III, LEAD ATTORNEY, Douglas A Cawley, Construction Brief (ECF No. 117); and Defendants McKool Smith, Dallas, TX; Ashley N Moore, Mitchell Research in Motion Corporation, Research in Motion Reed Sibley, McKool Smith PC, Dallas, TX; Bradley W Limited, Samsung Electronics Co. Ltd., and Samsung Caldwell, Caldwell Cassady Curry, P.C., Dallas, TX; Telecommunications America LLC's (collectively, the John B Campbell, McKool Smith, Austin, TX. "Mobile Phone Defendants") Responsive Claim For Research in Motion Limited, Research In Motion Construction Brief, with appendix in support (ECF Nos. Corporation, Counter Claimants: Thomas M 118-19). Also before the Court are the Web Defendants' Melsheimer, LEAD ATTORNEY, Carl E Bruce, Fish & Opening Claim Construction Brief, with appendix in Richardson, Dallas, TX; John R Emerson, Haynes & support (ECF Nos. 108, 114), and Plaintiff's response Boone LLP, Dallas, TX; Michael Andrew Bittner, Robert thereto (ECF No. 120). Finally before the Court are the Charles Earle, Thomas H Reger, II, Fish & Richardson Mobile Phone Defendants' Opening Claim Construction PC, Dallas, TX. Brief, with appendix in support (ECF Nos. 115-16), and Plaintiff's response thereto (ECF No. 122). For Facebook, Inc., Counter Claimant: Deron [*4] R Dacus, LEAD ATTORNEY, The Dacus Firm, P.C., Tyler, TX; Amy R Lemyre, PRO HAC VICE, Kirkland & Ellis I. BACKGROUND LLP, San Francisco, CA; Benjamin Damstedt, PRO HAC VICE, Heidi Keefe, Mark Randolph Weinstein, Plaintiff is the current owner of two Patents-in-Suit: (1) PRO HAC VICE, Sudhir Pala, PRO HAC VICE, Cooley United States Patent Number 6,895,557 (the "'557 LLP, Palo Alto, CA; Chanson Chang, PRO HAC VICE, Patent"), filed on July 21, 1999 and issued on May 17, Christopher R Nalevanko, PRO HAC VICE, Corey J 2005; and (2) United States Patent Number 7,765,482 Manley, PRO HAC VICE, Jason M Wilcox, PRO HAC (the "'482 Patent"), a continuation of the '557 Patent VICE, John E Dubiansky, PRO HAC VICE, Jonathan D application filed on October 8, 2004 and issued on July Brightbill, PRO HAC VICE, Kirkland & Ellis LLP, 27, 2010. The parties seek construction of twelve sets Washington, DC; Gregg F LoCascio, PRO HAC VICE, [*6] of terms appearing in one or both of the '557 and Kirkland & Ellis, Washington, DC; Michael K Hurst, '482 patents: (1) "pre-processing"; (2) "preprocessing Gruber Hurst Johansen & Hail LLP, Dallas, TX; Michael parameters" and "parameters used to control the pre- G Rhodes, PRO HAC VICE, Cooley LLP, San processing"; (3) "pre-processing the media object by the Francisco, CA. media object identifier for the requirements of the third- For Summit 6 LLC, Counter Defendant: Theodore party website, the preprocessing being done without Stevenson, III, LEAD ATTORNEY, Douglas A Cawley, [additional] user selection of the pre-processing"; (4) McKool Smith, Dallas, TX; Ashley N Moore, Mitchell "pre-processing the media object. . . for the Page 2 of 31 1 2012 U.S. Dist. LEXIS 186414, *6 requirements of the third-party web site"; (5) "placement protection. See Bell Commc'ns Research, Inc. v. Vitalink of. . . digital content into a specified form" or "to place. . Commc'ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995) . digital content in a specified form"; (6) "remote device" (internal citations omitted). or "device separate from said client device"; (7) "information that enables identification of a user" or Claim construction starts with the language of the claim "user identifier" or "user information"; (8) "publishing" or itself since a patent's claims define the invention to "publication"; (9) "a computer implemented method of which the patentee is entitled the right to exclude. pre-processing digital content in a client device for Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. subsequent electronic [publishing / distribution]"; (10) 2005) (en banc). "[T]he claims themselves provide "receiving. . . from a remote device" or "received. . . substantial guidance as to the meaning of particular from a device separate from a client device" or claim terms." Id. at 1314. Moreover, claim terms should "provided to said client device by a device separate from be given their ordinary and customary meaning as said client device"; (11) "displaying a preview image of understood by a person of ordinary skill in the art as of said selected digital content"; and (12) [*7] "pre- the effective filing date of the patent application. Id. at processing in accordance with one or more pre- 1313. This is because a patent is addressed to, and processing parameters that have been stored in intended to [*9] be read by, others skilled in the memory of said client device" and similar terms. The particular art. Id. However, the patentee is free to define parties have agreed on the construction of two his own terms, so long as any special definition given to additional terms: (13) "combining (including stitching) of a term is clearly defined in the specification. Intellicall, multiple media objects," and (14) "adding text or other Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. annotation to the media object." Cir. 1992). When construing disputed claim terms the court should II. LEGAL STANDARDS — PATENT CLAIM look first to the intrinsic record of the patent, including CONSTRUCTION the claims and the specification, to determine the meaning of words in the claims. Nazomi Commc'ns, Inc. Patent infringement is the unauthorized making, using, v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. selling, offering to sell, or importing into the United 2005). "[T]he specification is always highly relevant to States of any patented invention during the term of the the claim construction analysis. Usually it is dispositive; patent. 35 U.S.C. § 271(a). In a patent infringement it is the single best guide to the meaning of a disputed case, a court first determines the proper construction of term." Phillips, 415 F.3d at 1315 (internal quotation the patent claims by establishing, as a matter of law, the marks omitted). The specification acts as a dictionary scope and boundaries of the subject-matter of the when it expressly or implicitly defines terms. Id. at 1321. patent. Markman v. Westview Instruments, Inc., 52 F.3d Courts should also refer to the prosecution history if it is 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, in evidence. Vitronics Corp. v. Conceptronic, Inc., 90 384-85, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). F.3d 1576, 1582 (Fed. Cir. 1996). The prosecution Second, the trier of fact compares the properly history is part of the intrinsic record and consists of a construed claims to the allegedly infringing devices and complete record of all proceedings before the United determines whether there has been an infringement. Id. States Patent and Trademark Office, [*10] including Here, the issue currently before the Court is the proper prior art cited during the examination of the patent, and construction of certain disputed claims in the '557 Patent express representations made by the applicant as to the and the '482 Patent. scope of the claims. Id. A. [*8] Rules of Claim Construction The Federal Circuit has also stated that district courts may "rely on extrinsic evidence, which consists of all The claims of a patent are the numbered paragraphs at evidence external to the patent and prosecution history, the end of the patent that define the scope of the including expert and inventor testimony, dictionaries, invention, and thus the scope of the patentee's right to and learned treatises." Phillips, 415 F.3d at 1317 exclude others from making, using, or selling the (internal quotation marks omitted). Dictionaries and patented invention. See Astrazeneca AB v. Mut. Pharm. treatises can be "useful in claim construction[,]" Co., 384 F.3d 1333, 1335-36 (Fed. Cir. 2004). Claim particularly technical dictionaries which may help the construction is the process of giving proper meanings to court "to better understand the underlying technology the claim language thereby defining the scope of the and the way in which one of skill in the art might use the Page 3 of 31 1 2012 U.S. Dist. LEXIS 186414, *10 claim terms." Id. at 1318 (internal quotation marks media object [digital content]." See Pl.'s Opening Br. 9, omitted). As to expert testimony, the Federal Circuit has ECF No. 106. Plaintiff states that, consistent with this stated: construction, the applicants distinguished the Hui prior art by noting that "[t]he image correction process [of Hui] [E]xtrinsic evidence in the form of expert testimony does not modify the underlying image data. . . [but] is can be useful to a court for a variety of purposes, designed to add or delete information. . . that is such as to provide background on the technology at separate from the image data." See id. (quoting App. issue, to explain how an invention works, to ensure Supp. Pl.'s Opening Br. ('482 Patent, Resp. Office that the court's understanding of the technical Action of Jan. 22, 2010), at App. 100, ECF No. 113). aspects of the patent is consistent with that of a [*13] In this context, Plaintiff also refers to the person of skill in the art, or to establish that a applicants' response to the written description rejection, particular term in the patent or [*11] the prior art which states that "the client device pre-processes digital has a particular meaning in the pertinent field. content." See id. (quoting App. Supp. Pl.'s Opening Br. ('482 Patent, Resp. Office Action of Jan. 22, 2010), at Id. However, "a court should discount any expert App. 95, ECF No. 113). The Web Defendants respond testimony that is clearly at odds with the claim that Plaintiff's use of the term "underlying data" does not construction mandated by the claims themselves, the resolve the parties' basic dispute over what types of written description, and the prosecution history, in other modifications constitute pre-processing. See Web Defs.' words, with the written record of the patent." Id. (internal Opening Br. 14, ECF No. 108. Likewise, the Mobile quotation marks omitted). Extrinsic evidence is less Phone Defendants criticize the phrase "underlying data" significant than the intrinsic record and undue reliance as being a "nebulous concept[]." See Mobile Phone on it may pose a risk of changing the meaning of claims, Defs.' Responsive Br. 12, ECF No. 118. contrary to the public record contained in the written patent. Id. at 1317, 1319. The Web Defendants argue that pre-processing requires modifying "the [media object data / data of the digital content]." See Web Defs.' Opening Br. 14-15, III. CLAIM CONSTRUCTION ANALYSIS ECF No. 108. According to the Web Defendants, this 1. "pre-processing" construction properly limits pre-processing to modification of the actual image or sound data of a media object, as opposed to associating other data-like Go to table1 a comment, tag, or file name-with the image data. See The parties agree that pre-processing involves id. modification of the material being pre-processed and that pre-processing occurs prior to transmission of the The Mobile Phone Defendants argue that pre- pre-processed [*12] material. However, the parties processing should be understood as modifying "the dispute: (a) what material is pre-processed; (b) where [*14] digital content," since the prosecution history pre-processing occurs; (c) where the pre-processed twice refers to "pre-processing of the media object." See material is transmitted; and (d) whether pre-processing Mobile Phone Defs.' Opening Br. 13, ECF No. 115 is done "in accordance with the requirements of another (quoting App. Supp. Mobile Phone Defs.' Opening Br. device." ('482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 59-60, ECF No. 116). Plaintiff agrees with the Mobile Phone Defendants that the data being modified a. What material is pre-processed? during preprocessing "would be actual digital content data and not data separate from the digital content." The Plaintiff, the Web Defendants, and the Mobile Pl.'s Resp. to Mobile Phone Defs. 10, ECF No. 122. Phone Defendants offer the following respective Nevertheless, Plaintiff argues that its proposed suggestions as to what material is pre-processed: (1) language, while similar to the Mobile Phone Defendants' "the underlying data of the media object [digital proposal, is more precise. See id. content]"; (2) "the [media object data / data of the digital content]"; and (3) "the digital content." With regard to what material is pre-processed, the parties' only dispute is how best to express their Relying on the prosecution history, Plaintiff argues that consensus that the actual media object or digital pre-processing occurs to "the underlying data of the content, as opposed to data merely associated with the Page 4 of 31 1 2012 U.S. Dist. LEXIS 186414, *14 media object or digital content, is subject to pre- Patent claims 1, 45 and '482 Patent claim 1). Next, the processing. During the prosecution history, the Web Defendants argue that the specification disavows applicants repeatedly stated that, in the case of an non-browser based pre-processing by identifying the image, the material subject to pre-processing is the "browser, or client side intelligence" of the Prepare and "image data." See App. Supp. Pl.'s Opening Br. ('482 Post tools as [*17] a "key differentiator" from the prior Patent, Resp. Office Action of Jan. 22, 2010), at App. art. See id. (quoting '557 Patent col.4, ll.58-60). 99-100, ECF No. [*15] 113. Replacing the term "image" Furthermore, the Web Defendants state that the written with the broader terms "media object" and "digital description demonstrates the scope of the claimed content" as used in the claims, see, e.g., '557 Patent invention by repeatedly and uniformly referring to pre- claim 1; '482 Patent claim 1, the Court essentially processing as being web-based and occurring at a arrives at the Web Defendants' proposal of "media browser. See id. (quoting '557 Patent col. 2, ll.40-44, 48- object data" or "digital content data." While the 51). Moving to the prosecution history, the Web applicants consistently used the term "data" in the Defendants argue that the applicants distinguished the prosecution history, the applicants apparently struggled Fredlund prior art and their own invention by noting that with the best way to differentiate "image data" from data the former involved server-side processing while the merely associated with an image. Accordingly, the latter required browser-side processing. See id. (quoting applicants modified "image data" in a variety of ways, as App. Supp. Web Defs.' Opening Br. ('482 Patent, Resp. by describing: "raw data for the image"; "the image data Office Action of Feb. 4, 2009), at App. 127-29, ECF No. itself"; "the image data contained within the. . . file"; "the 114). Based on the foregoing, the Web Defendants underlying image data contained within the. . . file"; and claim that preprocessing is properly located "at the "actual image data." See App. Supp. Pl.'s Opening Br. browser." See id. (Resp. Office Action of Jan. 22, 2010), at App. 99-100, ECF No. 113. Likewise, the applicants noted that the In response to the Web Defendants, Plaintiff first argues Hui prior art merely modified "information associated that locating all pre-processing "at the browser" would with the image"; "information. . . that is separate from nullify important differences between the claims of the the image"; "separate information that is associated with '557 Patent and would make the broader claims of the the image data"; and "information associated with digital '482 Patent superfluous. See Pl.'s Resp. to Web Defs. content." See id. Based on the foregoing, the Court finds 4-9, ECF No. 120. Accordingly, Plaintiff states that the it would [*16] be helpful to the jury to clarify that the applicants [*18] knew how and when to inform the material subject to pre-processing does not include data reader of a "browser" requirement by using that term in merely associated with the media object or digital certain claims, including Claims 56 and 71 of the '557 content. Patent, but not using the term elsewhere in the '557 Patent or in any claim of the '482 Patent. See Pl.'s Accordingly, the Court finds that the material subject to Opening Br. 10-11, ECF No. 106. Next, Plaintiff argues pre-processing is "[media object data] / [digital content that the Web Defendants' "at the browser" limitation is data], as opposed to data merely associated with the improper because it takes a description from the [media object] / [digital content]." preferred web browser embodiment and reads it into the claims of the '557 and '482 Patents. See Pl.'s Opening Br. 10-11, ECF No. 106. Here, Plaintiff notes that each b. Where does pre-processing occur? of the Web Defendants' citations to the written description is to a discussion of the preferred Plaintiff's proposed construction is silent as to where embodiment, not the invention as a whole. See Pl.'s pre-processing occurs. By contrast, the Web Resp. to Web Defs. 4-9, ECF No. 120. Finally, Plaintiff Defendants argue that pre-processing occurs "at the argues that the prosecution history cited by the Web browser," while the Mobile Phone Defendants suggest Defendants nowhere mentions the narrow concept of that pre-processing occurs "at the client device." "browser"-side processing but distinguishes Fredlund on the more general basis of "device"-side processing. See The Web Defendants argue that pre-processing must id. occur "at the browser" and not on a server. See Web Defs.' Opening Br. 11-13, ECF No. 108. In support of For their part, the Mobile Phone Defendants argue that this contention, the Web Defendants first argue that the pre-processing occurs "at the client device." See Mobile claims of the '557 and '482 Patents require pre- Phone Defs.' Opening Br. 13, ECF No. 115. In support processing to occur at a browser. See id. (quoting '557 of this proposal, the Mobile Phone Defendants Page 5 of 31 1 2012 U.S. Dist. LEXIS 186414, *19 [*19] quote the same prosecution history as the Web claims as a whole; and (2) the applicants distinguished Defendants, including the applicants' statement that the Fredlund prior art on the basis of client-side "pre-processing occurs prior to upload at the local processing, not processing within a browser. device." See id. (quoting App. Supp. Mobile Phone Furthermore, the Court finds that the applicants' Defs.' Opening Br. ('482 Patent, Resp. Office Action of description of the current invention as a "web-based Feb. 4, 2009), at App. 59-60, ECF No. 116-4). Other media submission tool" is not a "clear and unmistakable than offering a proposed construction that is silent as to disclaimer" of pre-processing that occurs outside of a the location of pre-processing, Plaintiff offers no browser. See id. response to the Mobile Phone Defendants' suggestion that pre-processing occurs "at the client device." See Though the Court finds imposing an "at the browser" Pl.'s Resp. to Mobile Phone Defs. 8-11, ECF No. 122. limitation would be improper, the Court disagrees with As such, the Web Defendants in their responsive Plaintiff that the definition of pre-processing may be briefing state that Plaintiff has not disputed that pre- silent as to the location of pre-processing. The claim processing requires processing on the user's device. language refers to pre-processing either: (1) by a See Web Defs.' Responsive Br. 4, ECF No. 117. "media object identifier"; or (2) at the "local computer," "client device," or "local device." See '557 Patent claims In determining where pre-processing occurs, the Court 1, 45; '482 Patent claims 1, 11. As to the "media object has started with the language of the claims. As Plaintiff identifier" recited in certain claims of [*22] the '557 concedes, the majority of the claims appearing in the Patent, the applicants made clear in the prosecution '557 Patent-which discuss pre-processing by a "media history that this claim feature enables "client-side pre- object identifier. . . embedded within a third party web processing." See App. Supp. Web Defs.' Opening Br. site"-may fairly be read to require pre-processing in a ('557 Patent, Interview Summ. Feb. 27, 2003), at App. browser. See, e.g., '557 Patent claim 1. Importantly, 219, ECF No. 114-4. Elsewhere in the prosecution however, the "browser" limitation [*20] is not supported history, the applicants consistently characterized pre- by every claim of the '557 Patent, such as claims which processing as occurring either "at the client device" or recite pre-processing "at the local computer." See id. "at the local device." See, e.g., id. ('482 Patent, Resp. claim 45. Furthermore, the language of the '482 Patent Office Action of Feb. 4, 2009), at App. 127, ECF No. nowhere refers to a browser, but consistently describes 114-3 ("local device"); id. ('482 Patent, Resp. Office pre-processing either "in a client device" or "in a local Action Jan. 22, 2010), at App. 199, ECF No. 114-4 device." See, e.g., '482 Patent claims 1, 11. Because ("client device"). the claim language is not limited to pre-processing "at the browser," the Court may impose a browser limitation Based on the foregoing, the Court finds that locating only if the specification defines pre-processing to occur pre-processing "at the client or local device" is at the browser, or if the intrinsic evidence contains a supported by the claim language and prosecution history, and is sufficiently broad so as to be consistent disavowal of claim scope so as to limit the broadly with each claim of the '557 and '482 Patents. drafted pre-processing claims to include an "at the Accordingly, the Court finds that preprocessing must browser" limitation. See Thorner v. Sony Computer occur "at the client or local device." Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. 2012) (refusing to find "lexicography or disavowal" absent a clearly expressed intent to redefine a term or c. Where is the pre-processed material transmitted? limit claim scope, noting that the court does not "read limitations from the specification into claims" and "[i]t is Plaintiff's proposed construction is silent as to where not enough for a patentee to simply disclose a single pre-processed material is ultimately transmitted. For embodiment or use a word in the same manner in all their part, the Web Defendants and the Mobile Phone embodiments"). For the reasons argued by Plaintiff, the Defendants both argue [*23] that pre-processed Court agrees that the intrinsic evidence [*21] relied material is transmitted "to a server device." upon by the Web Defendants in support of their "at the browser" limitation is insufficient to constitute a As far as the Court can discern, the Web Defendants disavowal of claim scope. Specifically, the Court notes generally argue that, because the '557 and '482 Patents that: (1) the portions of the specification that discuss claim a web-based invention, pre-processed material pre-processing within a browser relate to the preferred must be transmitted "to a server device." See generally web site embodiment, and may not be grafted upon the Web Defs.' Opening Br., ECF No. 108; Web Defs.' Page 6 of 31 1 2012 U.S. Dist. LEXIS 186414, *23 Responsive Br., ECF No. 117. More specifically, the "server device" in some claims and to a "remote device" Web Defendants point to the preferred embodiment's in others. See, e.g., '482 Patent claim 1 ("server statement that pre-processing results in transportation device"); id. claim 11 ("remote device"). Accordingly, the "to a second location," which the specification earlier claim language does not support Defendants' universal defines as a "server." See Web Defs.' Responsive Br. 8, "server limitation." Furthermore, the Court finds that the ECF No. 117 (citing '557 Patent col.4 l.67-col.5 l.2). The applicants nowhere disclaimed pre-processing involving Web Defendants also direct the Court's attention to the transmission of pre-processed material to a device other specification and their arguments regarding the meaning than a server device. See Thorner v. Sony Computer of "remote device," which they suggest should be Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. construed as a "web server." See id. at 4 n.7, 29-30. 2012). As discussed infra, the Court also finds that the The Mobile Phone Defendants do not specifically term "remote device" should not be construed as a explain their use of the phrase "to a server device," but "server" or "web server," [*26] but should be defined quote the prosecution history in general support of their more broadly than the term "server device." See infra proposed construction. See Mobile Phone Defs.' Part III.6. Finally, the Court notes that the intrinsic Opening Br. 13, ECF No. 115 (quoting App. Supp. history, including the portions cited by the Web Mobile Phone Defs.' Opening Br. ('482 Patent, Resp. Defendants, consistently describe the invention as Office Action of [*24] Feb. 4, 2009), at App. 59-60, ECF involving pre-processing of material prior to "upload to No. 116-4). [a] remote device." See, e.g., App. Supp. Mobile Phone Defs.' Opening Br. ('482 Patent, Resp. Office Action of Addressing the Defendants' joint position, Plaintiff first Feb. 4, 2009), at App. 59-60, ECF No. 116-4. argues that a construction requiring pre-processed material to be transmitted "to a server device" would Based on the foregoing, the Court finds that the conflict with the claim language, since certain claims invention pre-processes material in preparation for recite transmission to a "remote device," other claims transmission "to a remote device." The Court finds that use the narrower term "server device," and Claim 1 uses this construction is consistent with each claim of the both terms. See Pl.'s Opening Br. 9, ECF No. 106. The '557 and '482 Patents and is supported by the intrinsic Mobile Phone Defendants suggest that this argument is record. irrelevant to their position because the claims in which the term "remote device" is used instead of "server device" are not asserted against the Mobile Phone d. Is pre-processing done "in accordance with the Defendants. See Mobile Phone Defs.' Responsive Br. requirements of another device"? 13, ECF No. 118. Plaintiff replies that such unasserted claims are relevant to claim construction because the Finally, the parties dispute Plaintiff's claim that pre- term "pre-processing" should be construed in a manner processing is done "in accordance with the that is consistent throughout the patent, including in the requirements of another device." context of unasserted claims. See Pl.'s Resp. to Mobile Plaintiff argues that the specification and prosecution Phone Defs. 9-10, ECF No. 122 (citing Eolas Techs., history make clear that pre-processing prepares media Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 798 (E.D. for transmission using the specifications of another Tex. 2011). Next, Plaintiff argues that the Web device. See Pl.'s Opening Br. 8, ECF No. 106. Defendants improperly refer to pre-processed material Specifically, Plaintiff points to language in the being transmitted [*25] to a server in the preferred specification, [*27] which states that the "submission embodiment, because mere disclosure of a single tool is configurable to perform a variable amount of embodiment does not limit the scope of the claims, and preprocessing on media objects prior to upload." See id. the Patents do not otherwise disclose a "server" at 8-9 (quoting '557 Patent col.2 ll.11-15). Plaintiff also limitation on pre-processing. See id. at 10. Finally, notes that the preferred web site embodiment has the Plaintiff responds that the prosecution history cited by benefit of "meet[ing] [a web site partner's] imaging the Mobile Phone Defendants is contrary to their specifications every time," has "the ability to preprocess proposal, since it uses the term "remote device" rather the media objects any number of ways prior to than "server device." See Pl.'s Resp. to Mobile Phone transporting to a second location," and "will Defs. 9, ECF No. 122. automatically prepare [media] to meet the requirements The Court begins by noting that the claim language of the second location." See id. (quoting '557 Patent recites transmission of pre-processed material to a col.3 ll.2-3, col.4 l.67-col.5 l.2, col.5 ll.19-20). Page 7 of 31 1 2012 U.S. Dist. LEXIS 186414, *27 Furthermore, Plaintiff quotes the applicants' response to "preprocessing" to be sufficiently broad to encompass a written description rejection of "pre-processing," which systems that may or may not involve preprocessing "in states: "In general, the client device pre-processes accordance with the requirements of another device." digital content based on pre-processing parameters So, for example, the applicants distinguished the obtained from another device. This pre-processing is Narayen prior art on the basis that "[n]one of the performed prior to upload to a server device." See id. at preprocessing described in Narayen [*30] is done in 9 (quoting App. Supp. Pl.'s Opening Br. ('482 Patent, response to the acquisition of the media object without Resp. Office Action of Jan. 22, 2010), at App. 95, ECF additional user input as claimed in independent claims No. 113). 15, 16, 48, and 49. The modifications of the picture album described in Narayen is done in response to user The Web Defendants do not address Plaintiff's claim input arranging the picture album." See App. Supp. Web that pre-processing is done "in accordance with the Defs.' Opening Br. ('557 Patent, Resp. Office Action requirements of another [*28] device." See generally Nov. 8 2002), at App. 55, ECF No. 114-2. Likewise, the Web Defs.' Responsive Br. 4-11, ECF No. 117. For their applicants distinguished the Hui prior art by noting that part, the Mobile Phone Defendants argue that this "Hui does not process digital content using pre- added limitation was crafted by the applicants to enable processing parameters received from a remote device." them to later distort the claim scope to avoid prior art. See id. ('482 Patent, Resp. Office Action of Jan. 22, See Mobile Phone Defs.' Responsive Br. 12, ECF No. 2010), at App. 210, ECF No. 114-4. The applicants did 118. The Mobile Phone Defendants also criticize this not, as they could have, alter the definition of pre- phrase as being unclear, and suggest that a clearer processing itself, as by claiming that pre-processing, limitation would include the language that Plaintiff when used in the claims, means modifying digital quoted from the '482 Patent's specification: "[the content in accordance with the requirements of another imaging recipient's] specifications." See id. at 12-13. device. Instead, the applicants used the term pre- processing in a broad sense, but limited the scope of As always, the Court begins with the claim language. their pre-processing claims through the claim language, Here, the Court notes that the claims variously recite as quoted above. "pre-processing. . . for the requirements of the third- party web site" ('557 Patent claim 1); "pre-processing. . Based on the foregoing, the Court finds that the. wherein the web page contains parameters used to applicants have not defined "pre-processing" to require control the preprocessing" ('557 Patent claim 45); "pre- modification "in accordance with the requirements processing. . . using. . . pre-processing parameters [*31] of another device." See Thorner v. Sony [received from a remote device]" ('482 Patent claim 1); Computer Entm't Am. LLC, 669 F.3d 1362, 1365-68 "pre-processing. . . in accordance with one or more pre- (Fed. Cir. 2012). Rather, the applicants have used "pre- processing parameters that are received from a device processing" in a broad sense, but have consistently separate from said client device" ('482 Patent claim 13); limited the claim language in the ways previously and "pre-processing. . . in accordance [*29] with one or described. Accordingly, the Court declines to include "in more pre-processing parameters that are received from accordance with the requirements of another device" in a remote device" ('482 Patent claim 35). As its construction of the term "pre-processing." demonstrated, the claim language requires "pre- processing" to be done: (1) for, using, or in accordance with; (2) requirements, parameters, or pre-processing e. Construction parameters; (3) of a third-party web site, web page, remote device, or device separate from the client Based on the foregoing, the Court finds that "pre- device. Plaintiff's proposal attempts to express these processing" means "modifying the [media object data / various limitations in a single phrase by defining pre- digital content data], as opposed to data merely processing as occurring "in accordance with the associated with the [media object / digital content], at requirements of another device." See Pl.'s Opening Br. the client or local device in preparation for transmission 8, ECF No. 106. Importantly, however, the claims do not to a remote device." define pre-processing as occurring "in accordance with 2. "pre-processing parameters / parameters used to the requirements of another device"; instead, the claims control the pre-processing" recite pre-processing with the additional limitations described above. Likewise, the prosecution history demonstrates that the applicants understood the term Go to table2 Page 8 of 31 1 2012 U.S. Dist. LEXIS 186414, *31 Plaintiff argues that the terms "pre-processing the term 'parameter'" as used in the disputed patents. parameters" and "parameters [*32] used to control the See Web Defs.' Opening Br., ECF No. 108. Citing a pre-processing" are self-explanatory once the Court range of extrinsic sources, Defendants argue that a construes "pre-processing." See Pl.'s Opening Br. 12, person of skill in the art of HyperText Markup Language ECF No. 106. Alternatively, Plaintiff proposes that these ("HTML") programming would understand the term terms be construed to mean "parameters for specifying" "parameters" to refer to values contained in HTML text the pre-processing. See id. For their part, Defendants that are passed to an applet and allow for customization argue that these terms should be construed to mean of an applet "without the need to examine and modify "values contained in HTML text that are passed to and the applet's source code used to process the image." Id. direct the code that performs" the pre-processing. See, at 15-16. Defendants argue that the '557 and '482 e.g., Web Defs.' Opening Br. 15, ECF No. 108. Each Patents use this art-specific meaning, as by explaining side incorporates its proposed definition of pre- that "[c]onfigurable parameters" include processing into its proposed definition of "pre- "DefaultImageWidth" and "DefaultImageHeight" that set processing parameters" and "parameters used to the "width and height of the images after they have been control the pre-processing." compressed for transmission." Id. at 16 (quoting '557 Patent, col.5 ll.46-63); see also Mobile Phone Defs.' In its opening brief, Plaintiff does not offer any specific Responsive Br. 15, ECF No. 118 (quoting '482 Patent, support for its proposed construction, except to argue col.5 l.7-col.6 l.6, app. A). that it "is true to the intrinsic record of the patents and avoids the errors introduced by Defendants' proposal." Plaintiff responds to Defendants' proposed construction See Pl.'s Opening Br. 12, ECF No. 106. Defendants by conceding that "pre-processing" could [*35] be fairly respond that Plaintiff's proposed definition does nothing defined as "values directing the pre-processing." See to resolve the parties' dispute over the term Pl.'s Opening Br. 12, ECF No. 106. However, Plaintiff "parameters" because it incorporates that term without argues, the use of the term "HTML" in Defendants' explaining it. See Web Defs.' Responsive Br. 11, ECF proposal is an attempt to limit the broadly drafted '482 No. 117; Mobile Phone Defs.' Responsive [*33] Br. 14, Patent—which by its claim language is not restricted to ECF No. 118. Furthermore, the Web Defendants argue web sites, web pages, or HTML—to the preferred web that the phrase "the requirements of another device" is site embodiment. See id. at 13. In addition, Plaintiff ambiguous and should be rejected for the same reasons states that although claims 45 and 60 of the '557 as discussed in the "pre-processing" context. See Patent—the only claims of the '557 Patent which refer to Mobile Phone Defs.' Opening Br. 15, ECF No. 115. pre-processing parameters—are web site related, the Plaintiff replies that this phrase is not only clear, but is claims merely allow for pre-processing parameters to be supported by: (1) the specification, which describes pre- transmitted by HTML but do not require the use of processing "to meet the requirements of the second HTML. See id.; see also Pl.'s Resp. to Web Defs. 9, location"; and (2) the prosecution history, where the ECF No. 120. Next, Plaintiff argues that requiring pre- applicants described pre-processing "based on pre- processing parameters to be transferred using HTML processing parameters obtained from another device." would exclude a preferred embodiment, since Figure 4B See Pl.'s Resp. to Mobile Phone Defs. 11, ECF No. 122 employs visual basic ("VB Script") rather than HTML. (quoting '557 Patent col.5 ll.16-19; App. Supp. Pl.'s See Pl.'s Resp. to Web Defs. 9, ECF No. 120 (citing Opening Br. ('482 Patent, Resp. Office Action of Jan. '557 Patent fig. 4B). Finally, Plaintiff argues that 22, 2010), at App. 95, ECF No. 113). Plaintiff also Defendants unduly rely on extrinsic evidence that is argues that the term "another device" is sufficiently drawn from a web context and contradicts the intrinsic broad to encompass all claims, which recite pre- evidence. See id. at 10. processing in accordance with the requirements of different devices, including a "third-party website" and Based on the foregoing, the Court begins with [*36] the "one or more devices that are remote from a server parties' agreement that "pre-processing parameters" device and said client device." Id. at 12 (quoting '557 and "parameters used to control the pre-processing" Patent claim 1; '482 Patent claim 13). may fairly be construed as "values directing the pre- processing." The only question remaining before the Defendants argue that their proposal of [*34] "values Court is whether, as Defendants suggest, such values contained in HTML text that are passed to and direct the must also be "contained in HTML text." Looking first to code that performs the pre-processing" is proper the claim language, the Court finds no support for because it "accurately recites the art-specific meaning of limiting pre-processing parameters to values contained Page 9 of 31 1 2012 U.S. Dist. LEXIS 186414, *36 in HTML text. In particular, the Court notes that while Opening Br. 13, ECF No. 106. By contrast, Defendants certain claims recite a "web page" containing propose "pre-processing the media object without the "parameters used to control the pre-processing," see, pre-processing being affected by user provided values e.g., '557 Patent claim 45, other claims recite the use of or selections." See Web Defs.' Opening Br. 17, ECF No. parameters transmitted by a "remote device" or "a 108. Here, the parties' dispute centers on what is meant device separate from said client device," see, e.g., '482 by "the pre-processing being done without [additional] Patent claims 1, 13. Defendants argue that their user selection of the pre-processing." definition is proper because a person of ordinary skill in the art of web design and HTML programming at the Plaintiff argues that its construction should be time of the invention would have understood [*39] adopted because it is consistent with the intrinsic "parameters" to refer to values contained in HTML text. evidence. See Pl.'s Opening Br. 14, ECF No. 106. First, This argument pre-supposes that both the '557 Patent Plaintiff argues that the specification and its discussion and '482 Patent are limited to a web context. As of prior art make clear that the type of user selection discussed with regard to the "at the browser" limitation, avoided by the '557 Patent is user selection of image the Court finds that the written [*37] description, data requiring "technical sophistication," such as the including its reference to the invention as a "web-based pixel values appropriate for the destination system. See media submission tool," does not constitute a clear and id. (citing '557 Patent col.1 ll.16-30, col.2 ll.52-63, col.3 unmistakable avowal of claim scope, so as to limit "pre- ll.1-3, col.5. ll.16-20). Specifically, Plaintiff argues that processing parameters" to an HTML context. See the preferred embodiment allows the user to select the Thorner, 669 F.3d at 1366-67. Likewise, the Court finds number of photos to upload, what text or caption to that the reference to the use of HTML values in the include with the photos, a desired photo size, and written description is unavailing to Defendants because whether to upload one main photo or a series of photos those descriptions appear only in the context of the to be presented as an animation. See id. at 15 (citing preferred embodiment, not the invention as a whole. '557 Patent col.4 ll.20-26 and 48-52, col.3 ll.60-66, fig. See Phillips v. AWH Corp., 415 F.3d 1303, 1320 (Fed. 2). Accordingly, Plaintiff argues, the '557 Patent does Cir. 2005); see also Thorner v. Sony Computer Entm't away with user selection of "complicated, technological Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. 2012). As input of pre-processing parameters" but allows for such, the Court finds that the ordinary meaning of "simpler user selections." See id. Plaintiff also argues "parameters" is broader than "values contained in HTML that this proposed construction is consistent with the text," and that the intrinsic evidence does not serve to prosecution history, which explains that "media object limit the scope or definition of this term. identifiers. . . acquir[e] media [*40] objects; the media objects being automatically pre-processed for the Based on the foregoing, the Court finds that the terms requirements of the third-party web site." See id. "pre-processing parameters" and "parameter used to (quoting App. Supp. Pl.'s Opening Br. ('557 Patent, control the pre-processing" should be given the full Resp. Office Action of Nov. 8, 2002), at App. 59-60, breadth of their ordinary meaning as understood by a ECF No. 113) (emphasis added). Based on the person of ordinary skill in the art at the time of the foregoing, Plaintiff contends that the '557 Patent invention. As such, the Court finds that "pre-processing requires a third party to supply one or more sets of pre- parameters" and [*38] "parameters used to control the processing parameters, such that the user need not pre-processing" mean "values directing the pre- select them, but allows the user to make selections that processing." ultimately affect which pre-processing parameters are applied. See id. 3. "pre-processing the media object. . . without [additional] user selection of the pre-processing" The Web Defendants respond that Plaintiff's proposal conflicts with the intrinsic evidence. See Web Defs.' Go to table3 Responsive Br. 14, ECF No. 117. First, the Web Defendants argue that the claim language bars all user Plaintiff argues that the phrase "pre-processing the selection of pre-processing and makes no exception for media object. . . without [additional] user selection of "simple" selections. See id. at 15. Next, the Web the pre-processing" should be construed as "pre- Defendants point to the prosecution history. See id. at processing the media object using preprocessing 15. Here, the Web Defendants argue that the applicants parameters obtained from another device and not pre- distinguished the Narayen prior art—which they argue processing parameters provided by the user." See Pl.'s allowed a user to "manipulate (edit) album images" Page 10 of 31 1 2012 U.S. Dist. LEXIS 186414, *40 through simple selections—by disclaiming "user. . . processing being done without [additional] user selection of the pre-processing once the image has selection of the pre-processing." See '557 Patent claims been acquired [*41] by the media object identifier." See 1 ("additional user selection"), 28 ("user selection"). In id. at 15 (quoting App. Supp. Web Defs.' Opening Br. relevant part, claims 45 and 60 of the '557 Patent ('520 Patent, Office Action of Nov. 1, 2002), at App. 239- disclose: (1) "acquiring a media object with a web 40, ECF No. 114-5); see also id. (quoting App. Supp. page," and (2) "preprocessing the media object. . . Web Defs.' Opening Br. ('520 Patent, Resp. Office without user selection of the pre-processing, wherein Action of Nov. 1, 2002), at App. 55, ECF No. 114-2). the web page contains parameters used to control the Finally, the Web Defendants argue that the portions of pre-processing." See id. at claims 45, 60. The parties' the written description cited by Plaintiff do not support its dispute centers on the meaning of "without [additional] position because each relates to user selection of user selection of the pre-processing." Because the information unrelated to how content will be pre- Court has, in relevant part, construed "pre-processing" processed. See Web Defs.' Responsive Br. 17, ECF No. as "modifying the media object data," see supra Part 117. In sum, the Web Defendants criticize Plaintiff for III.1, the instant claim term requires the modifying of the attempting to rewrite the claim language to say "without media object data to occur "without [additional] user using pre-processing parameters provided by the user." selection" of that modification. The prosecution history See Web Defs.' Opening Br. 17, ECF No. 108. clarifies the meaning of the "without [additional] user selection" claim term. In distinguishing the claimed pre- In support of their own proposal prohibiting user processing from the Narayen prior art, the applicants selections that "affect[]" pre-processing, the Web stated that "[n]one of [*44] the pre-processing Defendants argue that it captures the plain meaning of described in Narayen is done in response to the the claims and is consistent with the prosecution history. acquisition of the media object without additional user See Web Defs.' Opening Br. 20, ECF No. 108. Contrary input as claimed." See App. Supp. Web Defs.' Opening to the Web Defendants' position, Plaintiff responds that Br. ('557 Patent, Resp. Office Action Nov. 8 2002), at a person of ordinary skill in the art would conclude that App. 55, ECF No. 114-2. Likewise, the applicants stated the claim terms allow for user selection [*42] that that "[t]he modifications of the picture album described results in the use of one set of pre-processing in Narayen [are] done in response to user input parameters over another. See Pl.'s Opening Br. 15, ECF arranging the picture album." See id. Immediately prior No. 106. Plaintiff also contends that the Web to these statements, the applicants argued that, in the Defendants' proposal is divorced from the specification. relevant claims, "the media objects [are] automatically See Pl.'s Resp. to Web Defs. 11, ECF No. 120. pre-processed for the requirements of" a web site or Furthermore, Plaintiff argues that the prosecution history third-party web site. See id. cited by the Web Defendants does not clearly and unambiguously disclaim any and all user selection. See Plaintiff argues that the prosecution history quoted id. at 12. Here, Plaintiff argues that the Examiner above should not be used to construe the "without allowed the claims at issue because, while the prior art [additional] user selection" limitation for two reasons. pre-processed for the requirements of the user, the First, Plaintiff argues that these statements actually bear applicants' invention taught pre-processing for the on the "requirements" limitation of the claim language. requirements of a third-party website. See id. at 12. The Court disagrees. The prosecution history quoted Although the applicants referred to pre-processing above explicitly addresses two separate limitations of "without additional user input," Plaintiff argues, this the claims at issue: (1) the "requirements of the. .. web language was not argued or accepted by the Examiner site" limitation; and (2) the "without [additional] user in allowing the claims that were initially rejected. See id. selection" limitation. With regard to the second at 12-13 (citing App. Supp. Pl.'s Resp. to Web Defs. limitation, [*45] the prosecution history makes clear that ('557 Patent, Office Action of June 4, 2003), at App. pre-processing occurs "automatically," "in response to 141, ECF No. 120-1). the acquisition of the media object," "without additional user input." See App. Supp. Web Defs.' Opening Br. Beginning with the claim language, the Court notes that ('557 Patent, Resp. Office Action Nov. 8 2002), at App. claims 1 and 28 of the '557 Patent recite, in relevant 55, ECF No. 114-2. 1 Next, Plaintiff argues that the part: (1) "associating a media object with the media object [*43] identifier," and (2) "preprocessing the media object by the media object identifier for the 1 Here,the Court notes that in the same office action response requirements of the third-party web site, the pre- which describes pre-processing as occurring "automatically," Page 11 of 31 1 2012 U.S. Dist. LEXIS 186414, *45 Examiner did not adopt the applicants' discussion of the "pre-processing," the Court finds that "pre-processing. . "without [additional] user selection" limitation in allowing. without [additional] user selection of the pre- the originally rejected claims. The Court acknowledges processing" means "pre-processing. . . without that, in allowing then-numbered claims 15, 16, 48, and [additional] user input affecting what pre-processing 49, the Examiner stated that the "prior art of record fails occurs." This construction is consistent with the claim to teach the combination of claim elements," such as language, the intrinsic record, and addresses each of "pre-processing the media object. . . for the the arguments made by Plaintiff against the Web requirements of the [third-party] web site," but nowhere Defendants' proposed construction. [*48] Specifically, mentioned the "without [additional] user selection" the Court notes that this construction does not, contrary limitation. See App. Supp. Pl.'s Resp. to Web Defs. to Plaintiff's concerns, exclude a preferred embodiment ('557 Patent, Office Action of June 4, 2003), at App. as illustrated by Figure 2. As the written description 141, ECF No. 120-1. Importantly, however, the mere explains, Figure 2 demonstrates a web site embodiment fact that the Examiner did not rely on the applicants' containing "a web page with various sizes of media statements regarding the "without [additional] user object identifiers." See '557 Patent col.4 ll.25-26. By selection" limitation does not read those statements out selecting one media object identifier over another, the of the intrinsic record. See Am. Piledriving Equip., Inc. v. user may decide whether to upload a single image or a Geoquip, Inc., 637 F.3d 1325, 1336 (Fed. Cir. 2011). number of images to be combined into an animated [*46] The applicants in this case attempted to presentation. See id. fig. 2. This decision, in turn, may distinguish the Narayen prior art by clarifying the scope result in the use of one set of pre-processing of the "without [additional] user selection" limitation. By parameters over another, since each media object doing so, the applicants became bound by those identifier may be generated to use different pre- statements, regardless of whether the Examiner processing parameters. See id. Importantly, the user ultimately agreed with or relied upon them. See id. selections allowed by this preferred embodiment are Finally, the Court notes that, although the specification limited to the user choosing which and how many media may distinguish between complex and simple user object identifiers to use. This selection occurs prior to selections, the claim language disclaims any and all and as part of the association of the media object with user selection "of the pre-processing" following the media object identifier, and does not deal directly acquisition or association of the media object. Likewise, with the pre-processing to be performed by the chosen although Plaintiff's proposed construction equates "of media object identifier or the pre-processing step in the pre-processing" with "of the pre-processing which user selection of the pre-processing is excluded. parameters," this construction is negated by the claim Likewise, [*49] Figure 1 demonstrates a web page language. containing multiple media object identifiers. See id. fig. 1. As the written description explains, the user: (1) Having considered the parties' arguments and the associates an image with a media object identifier; (2) at record in this case, and incorporating its definition of his option, inserts a caption, chooses a caption from a menu, or supplies identifying information like an MLS "in response to the acquisition of the media object," and listing number; and (3) clicks a "Send" button which "without additional user input," the applicants amended causes the images to be uploaded and processed independent claims 15 and 16 from claiming "in response to "immediately according to the configuration" of the the associating step, automatically pre-processing. . . without media object identifier. See id. col.3 l.58-col.4 l.2. Here, [additional] user input" to "pre-processing. . . without the user makes selections both before and after [additional] user selection of the pre-processing." [*47] See association of an image with a media object identifier, App. Supp. Web Defs.' Opening Br. ('557 Patent, Resp. Office but the selections that occur after association do not Action Nov. 8 2002), at App. 39-40, ECF No. 114-2. At the affect the pre-processing itself. See id. In other words, same time, the applicants added new claims 48 and 49, which while "user selection" which affects pre-processing is also recited "pre-processing. . . without user selection of the prohibited within the pre-processing step, the claims and pre-processing." See id. at App. 46-47. Having made these changes and additions, the applicants nevertheless described specification contemplate user selections prior to the the pre-processing as claimed by amended claims 15 and 16, pre-processing step that may ultimately affect what pre- and newly added claims 48 and 49, using the very language processing occurs, such as selection of one media which had been removed by amendment from claims 15 and object identifier over another. The Court's construction is 16. In doing so, the applicants made clear their understanding consistent with these concepts. that the amendments to claims 15 and 16 did not change the ultimate effect of the claim limitations. Based on the foregoing, the Court finds that "pre- Page 12 of 31 1 2012 U.S. Dist. LEXIS 186414, *49 processing. . . without [additional] user [*50] selection the prior art. See id. at 23 (quoting App. Supp. Web of the pre-processing" means "pre-processing. . . Defs.' Opening Br. ('557 Patent, Resp. Office Action of without [additional] user input affecting what pre- June 5, 2002), at App. 256, ECF No. 114-6; id. ('482 processing occurs." Patent, Resp. Office Action of Feb. 4, 2009), at App. 127-29, ECF No. 114-3). 4. "pre-processing the media object. . . for the requirements of the third-party web site" In response, Plaintiff first argues that the Web Defendants' proposal violates the doctrine of claim Go to table4 differentiation. See Pl.'s Opening Br. 18-19, ECF No. 106. Here, Plaintiff notes that dependent claims 11 and Plaintiff argues that "pre-processing the media object. . 36, which narrow independent claims 1 and 28. for the requirements of the third-party web site" means respectively, recite "requirements [that] relate to "pre-processing the media into a format specified for the presentation requirements of the third party web site." 'third-party web site,'" with a "third-party web site" being See id. (quoting '557 Patent claims 13, 36). By defining given its plain meaning or being construed as "a web "requirements" as the format required [*53] for site that is not stored at or hosted by the user." See Pl.'s publication, display, or distribution, Plaintiff argues, the Opening Br. 18, ECF No. 106. The Web Defendants Web Defendants have rendered claims 11 and 36 originally proposed the construction "pre-processing superfluous. See id. The Web Defendants reply that the [*51] the media into the standard format required for doctrine of claim differentiation is merely a guide and publication by the 'third-party web site,'" and suggested should not be applied in this case, given that the that "third-party web site" is "a web site operated by a intrinsic evidence nowhere indicates that the applicants party other than the party that authored the media object invented a system involving server-side processing. See identifier." See Web Defs.' Opening Br. 20-21, ECF No. Web Defs.' Responsive Br. 22-23, ECF No. 117. Next, 108. In response to arguments made by Plaintiff, the Plaintiff argues that the Web Defendants are seeking to Web Defendants have modified part of their proposed introduce a publication, display, or distribution construction to "pre-processing the media into the requirement into two independent claims that have no format required for publication, display, or distribution by such requirement. See Pl.'s Opening Br. 18-19, ECF the 'third-party web site.'" See Web Defs.' Responsive No. 106 (citing '557 Patent claims 1 and 28). So, for Br. 24, ECF No. 117. Accordingly, the parties currently example, Plaintiff notes that claim 14, a dependent dispute: (1) whether "requirements" should be defined claim of claim 1, expressly recites preprocessing that as a specified format, or the format required for "enables the media object to be displayed on the web publication, display, or distribution; and (2) whether a site." See id. (quoting '557 Patent claim 14). Had the "third-party web site" is a web site not stored at or applicants wished to impose a publication, display, or hosted by the user, or a web site operated by someone distribution requirement on claims 1 and 28, Plaintiff other than the author of the media object identifier. argues, they could have done so. See id. In addition, Plaintiff rejects the Web Defendants' suggestion that the '557 Patent disclaims a system involving server-side a. "Requirements" processing. [*54] See Pl.'s Resp. to Web Defs. 14-15, ECF No. 120. In this context, Plaintiff argues that the With regard to the term "requirements," the Web '557 Patent addresses "pre-processing"—processing Defendants argue that the '557 Patent does not cover prior to transmission—but is agnostic as to whether systems in which the third-party web site is required to additional processing occurs thereafter. See id. perform additional processing on a media object prior to Accordingly, Plaintiff notes, the claims use "comprising" publication, display, or distribution. See [*52] Web language, such that a system may include unclaimed Defs.' Opening Br. 20-21, ECF No. 108. In support of elements—like "post-processing"—and still fall within their position, the Web Defendants note that the written the scope of the claims. See id. Likewise, Plaintiff description describes the invention as creating media contends that because the specification and prosecution objects "made to order," without the need for further history use permissive language—like "can," "ability," processing on the server side. See id. at 22-23 (quoting and "for example"—when describing the "made to order" '557 Patent col.3 l.2). Likewise, the Web Defendants benefits of the invention, these benefits should not be argue, the prosecution history focuses on eliminating construed as claim limitations. See id. the need for server-side processing prior to publication, display, or distribution as an important distinction over For the reasons argued by Plaintiff above, the Court Page 13 of 31 1 2012 U.S. Dist. LEXIS 186414, *54 finds that "requirements" should be read broadly as "a prosecution history, which emphasizes the ability of the format specified by the third-party web site" and not invention to allow third-party web site creators to narrowly as " the format required for publication, display, customize HTML code written by an applet author, or distribution by the third-party web site." In particular, supports viewing the term "third-party" from the the Court notes that the presence of dependent claims viewpoint of the applet author, not the user. See id. limiting "requirements" to presentation requirements (citing App. Supp. Web Defs.' Opening Br. ('557 Patent, gives rise to a presumption that the term "requirements" Resp. Office Action [*57] of June 5, 2002), at App. 254, itself is broader than presentation [*55] requirements. ECF No. 114-6; id. ('557 Patent, Resp. Office Action of See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 Nov. 8, 2002), at App. 53-54, ECF No. 114-2). (Fed. Cir. 2005). Furthermore, the Court agrees that the claims, which address "pre-processing," are agnostic as In response, Plaintiff argues that the Web Defendants' to whether processing may occur after transmission of proposal introduces a party to the claim language that the pre-processed material. Finally, although the not is required or mentioned by the claims: the media specification describes as a benefit of the preferred object identifier author. See Pl.'s Opening Br. 20-21, embodiment the fact that the tool eliminates the need for ECF No. 106. In addition, Plaintiff argues, the claim server-side processing, the Court finds that this language nowhere provides that the web site operator discussion does not constitute a disclaimer of "post- and the media object identifier author must be separate processing," or otherwise define "pre-processing" so as parties, as the Web Defendants suggest. See id. to exclude processing after transmission of the pre- According to Plaintiff, the Web Defendants' proposed processed material. See Thorner v. Sony Computer construction is yet another attempt to read the Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. specification and its preferred web site embodiment 2012). onto claim language that embraces a broader scope. See id. So, Plaintiff contends, the specification Based on the foregoing, the Court finds that describes a "preferred scenario where a vendor creates "requirements" means "a format specified by the third- the media object identifier as a turnkey offering for web party web site." Next, the Court will construe the term sites"; nevertheless, the claims are sufficiently broad to "third-party web site." encompass a situation in which the web site operator creates not only its own website but the media object identifier. See id. Furthermore, Plaintiff argues that the b. "Third-party web site" prosecution history cited by the Web Defendants [*58] draws a distinction not between a "third-party web Plaintiff does not argue in support of its proposed site" and the author of a media object identifier, but construction of "third-party web site" as "a web site that between a "third-party website" and a client or user. See is not stored at or hosted by the user," but dedicates its Pl.'s Resp. to Web Defs. 18, ECF No. 120 (quoting App. briefing to addressing the Web Defendants' proposed Supp. Pl.'s Opening Br. ('557 Patent, Resp. Office construction of "a web site operated by a party other Action of Nov. 8, 2002), at App. 59-60, ECF No. 113). than the party [*56] that authored the media object identifier." See Pl.'s Opening Br. 16-18, ECF No. 106; In construing "third-party web site," the Court begins Pl.'s Resp. to Web Defs. 20-21, ECF No. 120. The Web with the claim language at issue. Claims 1 and 28 of the Defendants argue that their construction properly '557 Patent disclose "accessing. . . the media object accounts for the three parties referenced by the claim identifier. . . embedded within a third-party web site" language "third-party web site": "(1) the user, (2) the and "pre-processing. . . by the media object identifier author of the applet or media object identifier, and (3) for the requirements of the third-party web site." '557 the third-party web site creator who customized the Patent claims 1, 28. By contrast, claim 15 of the '557 applet using HTML parameters." See Web Defs.' Patent recites "accessing a web site containing a media Responsive Br. 21-22, ECF No. 117. The Web object identifier" and "pre-processing. . . by the media Defendants also contend that the specification limits the object identifier for the requirements of a web site." Id. scope of the claims by consistently using the term "third- claim 15. Claims 37 also refers to a "web site" rather party" to mean a "customer" or "partner" of the applet than a "third-party web site," while claims 45 and 60 use author who can customize the applet by changing the term "web page." See id. claims 37, 45, 60. As parameters in the HTML code. See id. (citing '557 Defendants argue, the language chosen by the Patent col.5 ll.23-27, 42-60; id. at col.3 ll.1-11). applicants in claims 1 and 28 expressly indicates the Likewise, the Web Defendants argue that the presence of three parties, while Plaintiff's proposed Page 14 of 31 1 2012 U.S. Dist. LEXIS 186414, *59 [*59] construction contemplates only a user and a non- c. Construction user web site operator. Certainly, the term "third-party web site" is unclear when read in isolation because the Based on the foregoing, the Court finds that the term claims name only two parties: the user and the third- "pre-processing the media object. . . for the party web site. However, the specification and requirements of the third-party web site" means "pre- prosecution history clarify the "third-party" structure processing the media. . . into a format specified by a dictated by the claim language. Accordingly, the web site, the web site being operated by a party other applicants argued to the Examiner that the written than: (1) the user, or (2) the party which provided the description disclosed a "customer web site" as an operator of the web site with the code used to include example of a type of "third party web site." See App. the media object identifier on the web site." Supp. Web Defs.' Opening Br. ('557 Patent, Resp. 5. "placement of. . . digital content into a specified form" Office Action of Nov. 8, 2002), at App. 53, ECF No. 114- or "to place. . . digital content in a specified form" 2. Likewise, the applicants distinguished the Narayen prior art on the basis that "Narayen's use of the word Go to table5 'client' does not imply embedding, or integrating as an integral component of a business partner's web site. Plaintiff argues that "placement of. . . digital content into Narayen says nothing about integration into third party a specified form" or "to place. . . digital content in a web pages." See id. at App. 56. Plaintiff correctly notes specified form" should be given its plain meaning or, in that the prosecution history distinguishes a "third-party the alternative, construed as "modifying [*62] the web site" from a "client" or user, not a "media object underlying data of the digital content to meet certain identifier author." In making this distinction, however, the specifications." See Pl.'s Opening Br. 21-22, ECF No. applicants equated a "third party web page" with "a 106. Specifically, Plaintiff argues that placing digital business partner's [*60] web site." See id. In turn, the content into a "specified form" is the actual act of specification makes clear that "web sites (customers)" modifying the digital content to a particular size, file may include media object identifiers as follows: "To format, or other specification, as directed by the pre- include the Prepare and Post tools media object processing parameters. See id. (citing '557 Patent col.4 identifiers on a web page, the customer cuts and pastes l.65-col.5 l.14 and '482 Patent claims 14, 15). code snippets. . . from the [HTML] template into the web page." See '557 Patent col.5 ll.24-38. Accordingly, The Web Defendants respond that Plaintiff has pointed the specification clarifies that a "third-party web site" is a to nothing in the intrinsic record to support its "third-party" because it is a party other than the user interpretation of the term "form." See Web Defs.' and the party which provided the third-party web site Responsive Br. 28-29, ECF No. 117. The Web operator with the code necessary to include the media Defendants also criticize Plaintiff's construction for object identifier in the third-party web site. failure "to account for the requirement that [once modified,] the digital content conform to the format Considering the intrinsic record as a whole, the Court required for publication, display, or distribution by the finds that: (1) the claim term "third-party web site" server device." See id. Furthermore, the Web expressly requires the presence of three parties; (2) the Defendants argue that Plaintiff's construction, which claims disclose only two of the required parties, namely requires the pre-processing parameters to control the the user and the third-party web site; and (3) the written pre-processing, conflicts with Plaintiff's earlier position description and prosecution history make clear that the that "without user selection of the pre-processing" does final party required by the claim language is the party not preclude some user selections that affect pre- which provided the operator of the third-party web site processing. See id. Both sets [*63] of Defendants with the code used to include the media object identifier criticize Plaintiff's proposal for conflating the terms on the third-party web site. "form" and "format" by defining to "place. . . in a specified form" as "changing the format" of the data. Based on the foregoing, the Court finds [*61] that "third- See, e.g., Mobile Phone Defs.' Responsive Br. 6, ECF party web site" means "a web site operated by a party No. 118. That these terms have different meanings is other than: (1) the user, or (2) the party which provided supported, the Mobile Phone Defendants argue, by their the operator of the web site with the code used to use in the specification and claim language. See id. at include the media object identifier on the web site." 7-8 (as to "format," citing '557 Patent claims 11, 24; '482 Patent claims 24, 27; id. at col.4 ll.60-67, col.11 ll.48-53, Page 15 of 31 1 2012 U.S. Dist. LEXIS 186414, *63 col.12 ll.30-31) (as to "form," citing '482 Patent fig. 1, fig. (1) the surrounding claim language, and (2) the parties' 2, col.3 ll.15-19, 44-48, col.4 ll.4-10, col.5 ll.54-col.7 agreement that pre-processing parameters direct the l.26). Likewise, the Web Defendants argue that code that modifies image data. See Pl.'s Resp. to Web Plaintiff's construction not only reads out the Defs. 19, ECF No. 120. Using Defendants' construction, "placement" limitation of the claim language but Plaintiff argues, the pre-processing parameters only effectively erases the distinction between "placement. . direct placement of media into a field on a web page. . into a specified form" and the separately claimed act of See id. Next, Plaintiff argues that the prosecution history "pre-processing." See id. at 7-8 (as to "pre-processing," contradicts Defendants' [*66] proposal by quoting '482 Patent claims 14, 15) (as to "placement" in demonstrating that the applicants in distinguishing prior a "form," quoting '482 Patent claims 1, 13, 38). art equated "placement. . . into a specified form" with making an actual modification of the image, such as "an In reply, Plaintiff contends that its proposal does not application of specific coloring." See id. (quoting App. read out the "placement" limitation but merely captures Supp. Pl.'s Opening Br. ('482 Patent, Resp. Office the idea that "the act of [*64] 'placement. . . into a Action of Jan. 22, 2010), at App. 101, ECF No. 113). specified form' is the act of preprocessing." See Pl.'s Next, Plaintiff reiterates its position that Defendants' Resp. to Web Defs. 4-5, ECF No. 120. Plaintiff also construction improperly reads the preferred web site argues that using the term "format" in place of "form" embodiment into the claims of the '482 Patent when does not change the construction of the term at issue, neither the claim language nor the invention is limited to since the real dispute is whether "form" is limited to a a web context. See id. at 20. Moving to the extrinsic web or HTML form. See id. at 6. evidence, Plaintiff criticizes Defendants citing extrinsic evidence that contradicts the intrinsic record, and for Supporting their own construction, Defendants argue relying on handpicked HTML references for the that "placement of. . . digital content into a specified proposition that the term "form" refers to an HTML form. form" means "filling in a field in a webpage with the See id. at 21. digital content." See, e.g., Web Defs.' Opening Br. 27, ECF No. 108. Defendants explain that, in their For the reasons argued by Plaintiff above, the Court construction, a "form" is an HTML form and "placement. agrees that "placement. . . of content into a specified. . into a specified form" refers to "dragging-and- form" and "to place. . . digital content into a specified dropping an image to a specific field." See id. form" refer to the actual act of pre-processing to meet Defendants argue that their construction finds support in certain specifications, such as the form dictated by "pre- the specification, which repeatedly and consistently processing parameters." For reasons discussed uses "form" to refer to a web page or HTML form with throughout this order, [*67] the Court also declines "fields" into which digital content can be "placed." See, Defendants' invitation to read the web-based preferred e.g., Mobile Phone Defs.' Opening Br. 6-7, ECF No. 115 embodiment onto the broadly drafted claims of the '482 (quoting '482 Patent col.3 ll.15-17, 40-47, col.4 ll.4-10, Patent. See Phillips v. AWH Corp., 415 F.3d 1303, 1320 37-45, col.5 l.54-col.6 l.26, col.7). In addition, (Fed. Cir. 2005); see also Thorner v. Sony Computer Defendants emphasize the specification's description of Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. media [*65] objects being "placed" in the media object 2012). identifier. See id. According to Defendants, the specification of the '482 Patent demonstrates that the Accordingly, the Court finds that "placement. . . of scope of the invention, referred to as a "web-based content into a specified form" and "to place. . . digital media submission tool," is limited to web page forms content into a specified form" mean "modifying the with "fields" waiting to be filled with digital content. See digital content data to meet certain specifications." id. at 7-8 (citing '482 Patent figs. 1, 2). Citing extrinsic 6. "remote device" or "device separate from said client evidence, Defendants also argue that their construction device" is consistent with the ordinary usage of these terms by relevant persons of ordinary skill in the art—web site creators—in the late 1990s. See Mobile Phone Defs.' Go to table6 Opening Br. 8, ECF No. 115 (citing App. Supp. Mobile Phone Defs.' Opening Br., at App. 86-88, ECF No. 116). Plaintiff argues that "remote device" and "device separate from said client device" should be given their Plaintiff responds that Defendants' proposed plain meaning definitions of "device not co-located with construction must fail, particularly when read against: the client device" and "device other than the client Page 16 of 31 1 2012 U.S. Dist. LEXIS 186414, *67 device" respectively. See Pl.'s Opening Br. 27-29, ECF device" and "device separate from said client device" be No. 106. The Web Defendants suggest "web server" as understood as a "web server." See Mobile Phone Defs.' a construction for these terms, while the Mobile Phone Responsive Br. 16-18, ECF No. 118. Furthermore, the [*68] Defendants posit the definition "web server that Mobile Phone Defendants allege that it would be contains the pre-processing parameters." See Web illogical for such servers not to "contain the Defs.' Opening Br. 29, ECF No. 108; Mobile Phone preprocessing parameters," since the client device Defs.' Opening Br. 16, ECF No. 115. receives the pre-processing parameters from the server device. See id. The Web Defendants' arguments are Plaintiff argues that its construction should be adopted similar to those of the Mobile Phone Defendants, except because it properly gives distinct meaning to the terms that the Web Defendants do not argue that the "web "remote," "separate," and "server" as used in the claims. server" must "contain the pre-processing parameters." See Pl.'s Opening Br. 27-29, ECF No. 106. So, for See Web Defs.' Responsive Br. 29-30, ECF No. 117. instance, Plaintiff argues that claim 24 of the '482 Patent purposefully refers to a "remote device" and a "device Looking first to the claim language, the Court agrees separate from said client device," while claim 1 uses the with Plaintiff that the terms "remote device," "device separate term "server device." See id. Because the separate from said client device," and "server device" claims use these various terms in different ways, are presumed to have different meanings because Plaintiff argues, they are presumed to have different these distinct phrases are used differently in the same meanings as conveyed by Plaintiff's proposed claims and across the claims of the Patents at issue. construction. See id. Next, Plaintiff criticizes Defendants' See Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 proposals for confusing terms, like "remote," which F.3d 1324, 1336 (Fed. Cir. 2011). In addition, the Court identify the location of devices but do not limit their agrees with Plaintiff that the [*71] plain meaning of functionality. See id. Plaintiff also argues that "remote device" is a "device not co-located with the Defendants' proposals should be rejected because they client device," while a "device separate from said client both attempt to limit the '482 Patent to its preferred web device" is a "device other than the client device." site embodiment. See id. For example, Plaintiff notes Accordingly, the issue before the Court is whether the that each portion of the specification [*69] cited by intrinsic record, through a limiting definition or a Defendants in support of their proposed construction disavowal of claim scope, narrows the plain meaning of relates to the preferred embodiment or a piece of prior these terms to include only "web servers." Here, the art rather than the present invention. See id.; see also Court notes that the portions of the specification which Pl.'s Resp. to Web Defs. 29, ECF No. 120. In sum, Defendants cite for demonstrating that a remote device Plaintiff argues, the specification does not convey a or device separate from a client device is a web server clear intention to limit the claims such that the web- relate to the preferred web site embodiment, and may based embodiment may be read onto the broader not be grafted upon the claims as a whole. See Phillips claims of the '482 Patent. See id. at 29-30. v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005). Furthermore, the Court finds that the applicants' The Mobile Phone Defendants counter that the description of the current invention as a "web-based prosecution history consistently: (1) uses the term media submission tool" is not a "clear and unmistakable "remote" to describe the functionality, rather than the disclaimer" so as to limit the meaning of "remote device" mere location, of a device, and (2) equates the term or "device separate from said client device" to a "web "remote device" with the only device mentioned in the server." See Thorner v. Sony Computer Entm't Am. '482 Patent's specification that is remote or separate LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. 2012). from the client device, i.e. a web server containing the pre-processing parameters that are transferred to the Based on the foregoing, the Court finds that the terms client device. See, e.g., Mobile Phone Defs.' "remote device" and "device separate from said client Responsive Br. 16-18, ECF No. 118 (quoting App. [*72] device" mean "device not co-located with the Supp. Mobile Phone Defs.' Opening Br. ('482 Patent, client device" and "device other than said client device" Resp. Office Action of Feb. 4, 2009), at App. 59, ECF respectively. No. 116); see also Mobile Phone Defs.' Opening Br. 16- 17, ECF No. 115 (quoting '482 Patent col.1 ll.10-14, 51- 7. "information that enables identification of a user" or 56, col.2 ll.1-4, col.6 ll.43-48). Accordingly, [*70] the "user identifier" or "user information" Mobile Phone Defendants argue, the context of the claims of the '482 Patent dictates that the terms "remote Go to table7 Page 17 of 31 1 2012 U.S. Dist. LEXIS 186414, *72 According to Plaintiff, the parties agree that "information the Mobile Phone Defendants argue that the Court that enables identification of a user," "user identifier," should adopt its proposed construction because the "as and "user information" are synonymous and should be opposed to a device" language enforces the distinction construed to mean at least "information related to a between user information and mere device information. person." See, e.g., Pl.'s Opening Br. 26, ECF No. 106. See id. For their part, the Mobile Phone Defendants reject the idea that these terms are synonymous and state that the Plaintiff responds that Defendants' proposed language only part of these claims in dispute is the term should be rejected because it introduces an "opposed to "information," which they define as "information related a device" limitation that is not supported by the intrinsic to a person, as opposed to a device." See Mobile Phone record and excludes a preferred embodiment. See, e.g., Defs.' Responsive Br. 26, ECF No. 118. The remaining Pl.'s Opening Br. 26, ECF [*75] No. 106. In particular, claim language, the Mobile Phone Defendants assert, is Plaintiff argues that a preferred embodiment of the '482 different and has never been disputed. See id. Patent contemplates "broad information" being used in connection with images, including information that is Plaintiff offers no specific support for its proposed "image-specific, user-specific, or both." See id. (quoting construction. See Pl.'s Opening Br. 26, ECF No. 106. '482 Patent col.4 ll.31-32, 42-45). So, for instance, For their part, the Mobile Phone Defendants dedicate Plaintiff notes that a common piece of information [*73] their briefing to arguing that "mere device- referenced in the specification, a user ID and password, identifying information" is not sufficient under the claims, may relate to both a user and a device. See id. such that their construction should be adopted. See Likewise, Plaintiff notes that a cell phone number may Mobile Phone Defs.' Opening Br. 27, ECF No. 115. be used to identify the user of a cell phone who is billed Accordingly, the Mobile Phone Defendants assert that by the cell phone company as well as the device that Plaintiff should not be permitted to rewrite the claim rings when the number is called. See Pl.'s Resp. to language to cover "mere device-identifying information" Mobile Phone Defs. 27, ECF No. 122. Because by equating a "user" with a "device." See id. This Defendants' proposed construction would exclude data construction, the Mobile Phone Defendants argue, leads that relates both to a user and a device from the term to the result in dependent claim 19 of the '482 Patent "user information," Plaintiff argues, it should be rejected. that the client device must retrieve information regarding See id. The Mobile Phone Defendants reply that the itself in a manner transparent to itself. See id. (quoting '482 Patent's specification nowhere discloses a '482 Patent claims 13, 19). Furthermore, the fact that preferred embodiment that uses mere device numerous claims of the '482 Patent are directed to information to enable identification of a user. See Mobile specific types of information, while never referring to Phone Defs.' Responsive Br. 25-26, ECF No. 118. mere device information, indicates that "user information" cannot refer to mere device information. The Court begins by noting that, although the Mobile See id. (quoting '482 Patent claims 13, 19-20, 46-50). Phone Defendants [*76] accuse Plaintiff of proposing a The Mobile Phone Defendants further argue the user ID construction that encompasses mere device and password referred to in the specification are information, the parties' proposals both communicate sufficient to identify a user, but not a device, and the idea that the "information" required by the disputed therefore support Defendants' construction. See id. at claim terms must be related to a user, or person. 27-28. Moving to the prosecution [*74] history, the Accordingly, Plaintiff's proposed construction requires Mobile Phone Defendants next argue that because the "information related to a person," while the Mobile applicants argued that information disclosed in the Hui Phone Defendants suggest the additional limitation "as prior art—"information relating to creation and/or capture opposed to a device." The Mobile Phone Defendants of the image, such as the type of hardware device used also seem to suggest that, when Plaintiff's proposed to capture the image and/or settings on the device"— construction is inserted into the "user-identifying claim was not "user-identifying information," Plaintiff cannot limitations," those claims may encompass "mere device- now argue that such "device-identifying information" identifying information." The Court disagrees. Using the falls within the scope of "user information." See id. at 28. agreed-upon "information related to a person" language Finally, the Mobile Phone Defendants criticize Plaintiff's in each of the disputed claim terms, the Court arrives at proposed construction because it has the potential to the following constructions: (1) "information that enables envelop "persons" other than the user, such as the identification of a user" and "user identifier" mean person who manufactured the client device. See Mobile "information related to a person that enables Phone Defs.' Responsive Br. 25, ECF No. 118. In sum, identification of that person"; and (2) "user information" Page 18 of 31 1 2012 U.S. Dist. LEXIS 186414, *76 means "information related to a person." Contrary to the available to the broader public. See [*79] id. at 11 Mobile Phone Defendants' suggestion, the former (citing App. Supp. Mobile Phone Defs.' Opening Br. constructions are not sufficiently broad to encompass ('482 Patent, Resp. Office Action of July 10, 2009), at information that only enables identification [*77] of a App. 97, ECF No. 116-12). The Mobile Phone device, since they expressly require the information Defendants further support their construction by pointing related to a person to enable identification of that to dictionary definitions of "publish" and "publication." person. By contrast, the mere "user information" term— See id. at 11-12. which the Mobile Phone Defendants concede is broader than the user-identifying information terms—may Plaintiff argues that Defendants' construction must be encompass information which enables identification of a rejected because it: (1) excludes preferred and claimed device, rather than a person, so long as the information embodiments, (2) is inconsistent with the use of the relates to a person. The Court finds that these terms in other claims, and (3) improperly limits the '482 constructions are required by the plain meaning of the Patent to web-based embodiments. See Pl.'s Opening claim terms and are consistent with the parties' positions Br. 27-28, ECF No. 106. First, Plaintiff argues that a regarding "user information" and mere "device preferred embodiment described in the specification is a information." realty web site associated with an MLS number. See id. Plaintiff states, without support, that it was common at Accordingly, the Court finds that "information that the time of the invention for MLS web sites to restrict enables identification of a user" and "user identifier" access to property information to registered Realtors, mean "information related to a person that enables such that images were "published" not to the public at identification of that person," while "user information" large but to a small community of users with access to a means "information related to a person." restricted service. See id. Second, Plaintiff argues that other claims demonstrate the non-public nature of the 8. "publishing" or "publication" term "publishing" as used in the '557 and '482 Patents. See id. For example, [*80] Plaintiff points to claim 36 of Go to table8 the '482 Patent, which claims a "computer implemented method of publishing digital content. . . comprising. . . Plaintiff argues that the terms "publishing" and distributing. . . to one or more devices." See id. Finally, "publication" have their plain meaning and do not Plaintiff argues that Defendants have improperly require construction. See Pl.'s Opening Br. 27, ECF No. attempted to limit the '482 Patent to a web-based 106. [*78] In the alternative, Plaintiff offers "sharing" as embodiment by suggesting "posting to a web page" as a definition for these terms. See id. Plaintiff simply an example of "publication." See id. argues that this construction best represents the meanings of "publication" and "publishing." See id. The Mobile Phone Defendants respond that the '482 Patent does not disclose an embodiment demonstrating The Mobile Phone Defendants argue that "publishing "private" publication, since every reference in the '482 and "publication" mean "making the digital content Patent is to a publicly accessible real estate web site. publicly available (e.g. posting the digital content on a See Mobile Phone Defs.' Responsive Br. 9-10, ECF No. web page)." See Mobile Phone Defs.' Opening Br. 10, 118. The Mobile Phone Defendants also argue that ECF No. 115. In support of their construction, the Mobile even if a "private" embodiment were disclosed, such an Phone Defendants first argue that publishing is different embodiment would not read onto claims that expressly than transportation or transmission, a point which claim "publishing." See id. Second, the Mobile Phone Plaintiff concedes. See id.; see also Pl.'s Resp. to Defendants argue that the use of the different terms Mobile Phone Defs. 6, ECF No. 122. Citing claim 36 of "publishing" and "distributing" in claim 36 of the '482 the '482 Patent, the Mobile Phone Defendants then Patent indicates that the terms should be given different argue that publication is also distinct from mere meanings. See id. Lastly, the Mobile Phone Defendants distribution. See Mobile Phone Defs.' Opening Br. 10, counter that the example included within their definition ECF No. 115. While the claim language and the is proper because it would be helpful to the jury prosecution history of amendments to the claim [*81] and is consistent with the specification of the '482 language indicate that transportation, transmission, and Patent. See id. In reply, Plaintiff emphasizes that the distribution refer to making digital content available to claim language and specification of the '482 Patent select devices, the Mobile Phone Defendants argue, make clear that "publishing" need not be to the general publishing and publication refer to making digital content public but may involve making information available "to Page 19 of 31 1 2012 U.S. Dist. LEXIS 186414, *81 one or more devices." See Pl.'s Resp. to Mobile Phone to the result that the claims disclose "making [digital Defs. 6, ECF No. 122 (quoting '482 Patent claim 51). content] publicly available to one or more devices." Plaintiff also criticizes the Mobile Phone Defendants' Plaintiff argues that this consequence of the "publicly reliance on extrinsic dictionary definitions that are available" requirement demonstrates that "publication" divorced from the context of the claims, and directs the must be defined otherwise, because digital content may Court to extrinsic evidence from the Facebook website not be made publicly available if a single device is on to support its own construction. See id. at 7. the receiving end. See Pl.'s Resp. to Mobile Phone Defs. 6, ECF No. 122 (quoting '482 Patent claim 51). Here, the Court agrees with the Mobile Phone The Court disagrees. Certainly, making content publicly Defendants that the plain, ordinary meaning of the term available through "publication" is simpler and more "publication" is "making publicly available." This intuitive when multiple devices are involved [*84] as construction finds support in the multiple sources cited recipients. Importantly, however, it is neither illogical nor by the Mobile Phone Defendants and in the case law. impossible to envision a scenario in which "publication" See, e.g., Kyocera Wireless Corp. v. Int'l Trade of digital content to a single device results in the content Comm'n, 545 F.3d 1340, 1350 (Fed Cir. 2008) (defining being made publicly available by virtue of the public's "publication," in the context of printed publication ability to access that single device. constituting prior art, to require "public accessibility"). Plaintiff has cited no evidence in support of its Based on the foregoing, the Court finds that "publishing" suggestion that the term publication, [*82] as used in and "publication" mean "making publicly available." the '482 Patent, is different from this ordinary meaning, 9. "a computer implemented method of pre-processing and has cited no evidence to support its claim that the digital content in a client device for subsequent preferred embodiment conflicts with the Mobile Phone electronic [publishing / distribution]" Defendants' proposed definition. As an alternative to the plain meaning, Plaintiff suggests "sharing" as a definition for the publication terms. Here, the Court Go to table9 notes that the specification expressly discusses Plaintiff argues that "a computer implemented method of "sharing," such that the applicants knew how to claim pre-processing digital content in a client device for sharing. See '482 Patent col.1 ll.23-24; id. col.1 ll.39-40. subsequent electronic publishing" and similar terms do The concept of sharing is also more consistent with the not require construction because they are merely claim term "distribution," which is used in place of preambles and are not unclear. See Pl.'s Opening Br. "publication" in certain claims. See '482 Patent claims 28, ECF No. 106. Plaintiff also argues the Mobile Phone 26, 38. Because the '482 Patent uses the separate Defendants' construction is incorrect. See id. terms "publication" and "distribution" throughout the claims, and uses both terms in claim 38, the Court The Mobile Phone Defendants argue that these terms presumes that these terms have different meaning and should be construed to mean "the steps of the claim scope. See Am. Piledriving Equip., Inc. v. Geoquip, Inc., performed on the client device are [*85] performed 637 F.3d 1324, 1336 (Fed. Cir. 2011). Applying during the execution of one computer program." See Plaintiff's "sharing" definition to "publication," the Court Mobile Phone Defs.' Opening Br. 20, ECF No. 115. can find no basis on which to distinguish mere First, the Mobile Phone Defendants argue that the "distribution" from "publication," such that the preambles are subject to claim construction as claim "publication" limitation would be superfluous. See id. limitations because (1) the preambles breathe life into (quoting [*83] Comark Comm'ns, Inc. v. Harris Corp., the claims by providing an antecedent basis for claim 156 F.3d 1182, 1187 (Fed. Cir. 1998)) ("There is terms, such as "said client device"; (2) the preambles presumed to be a difference in meaning and scope were extensively amended and relied upon by the when different words or phrases are used in separate applicants in distinguishing the purported invention from claims. To the extent that the absence of such the prior art; and (3) the preambles are necessary to difference in meaning and scope would make a claim understanding the relationship between each of the superfluous, the doctrine of claim differentiation states recited claim steps, such as the fact—argued by the the presumption that the difference between claims is applicants in distinguishing the '983 Patent—that the significant."). If "publication" is understood not only as transmitting step of claim 1 is performed by a client sharing, but as sharing with the public, this problem is device, despite such a requirement not being mentioned avoided. The Court acknowledges that defining in the transmitting step. See id. at 20-22. As to the prior "publication" to mean "making publicly available" leads Page 20 of 31 1 2012 U.S. Dist. LEXIS 186414, *85 art, the Mobile Phone Defendants argue that the only Defendants' position is contradicted by the web site novelty of the current invention identified in the embodiment, which involves client-side [*88] activity in specification is the fact that, unlike prior tools, it multiple programs, including a web browser and a plug- integrates the claimed process into a single computer in program like a Java applet. See id. (citing '482 Patent program, as stated in the preamble. See id. at 23. col.6 ll.33-40). Similarly, Plaintiff argues, the separate steps of the claims would be understood as involving Plaintiff first responds that the preambles need not be different programs, such that "pre-processing" involves construed as claim [*86] limitations because they a Java applet in the web embodiment; "retrieving" may merely provide an introduction to the subsequent claim involve an applet, the browser, and the memory language, and are not needed to give life, meaning, or functions of the operating system; and the transmitting vitality to the claims. See Pl.'s Opening Br. 28, ECF No. step would involve networking components of an 106. First, Plaintiff argues that merely providing an operating system. See id. Addressing the Mobile Phone antecedent basis for later-used claim terms does not Defendants' use of the prosecution history, Plaintiff next make the preamble limiting. See Pl.'s Resp. to Mobile argues that the applicants distinguished the prior art on Phone Defs. 19, ECF No. 122. Here, Plaintiff the basis that it was "daunting" and complex, but distinguishes the cases cited by the Mobile Phone nowhere described their invention as being simpler by Defendants on the grounds that the preambles do not virtue of involving only one computer program. See id. limit the nature of a "client device" in ways omitted from In sum, Plaintiff criticizes the Mobile Phone Defendants the claim language—as by describing a "battery- for rewriting the preambles to describe a "computer powered client device" where the claims mention only implemented, one-program method." See id. at 29. "said client device." See id. Next, Plaintiff attacks the Mobile Phone Defendants' claim that the preambles Replying to Plaintiff's argument based on the preferred were repeatedly amended for purposes of patentability, web site embodiment, the Mobile Phone Defendants noting that each of the referenced amendments either: assert that the multiple "programs" identified by Plaintiff (1) cancelled entire claims and replaced them with new are, in reality, a variety of resources called upon ones; or (2) amended the preambles only as necessary [*89] during the execution of a single computer to conform with changes made in the body of the claims. program, the browser. See Mobile Phone Defs.' See id. In sum, Plaintiff argues that the claim language Responsive Br. 22-23, ECF No. 118. Accordingly, the sets forth a complete system, such that the preambles Mobile Phone Defendants argue, their "one computer introduce the purpose of the claims and are not program" limitation does not exclude a preferred [*87] necessary to an understanding of the invention. embodiment and should be adopted. See id. See id. Here, the Court must first determine whether the Moving to the Mobile Phone Defendants' proposed disputed preamble language must be construed as a construction, Plaintiff argues that even if the preambles claim limitation. As the Mobile Phone Defendants have must be construed, the "one computer program" is argued, a preamble may be treated as a claim limitation incorrect for a number of reasons. See Pl.'s Resp. to when "patentability depends on limitations stated in the Mobile Phone Defs. 22, ECF No. 122. First, Plaintiff preamble. . . when the preamble contributes to the argues that the Mobile Phone Defendants have definition of the claimed invention. . . [or when] the conflated the terms "computer implemented method" preamble provides antecedents for ensuing claim terms and "computer program," where the Federal Circuit has and limits the claim terms accordingly." See C.R. Bard, recognized these concepts as distinct. See id. at 22-23 Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1350 (Fed. Cir. (citing In re Gelnovatch, 595 F.2d 32, 37 (C.C.P.A. 1998). First, the Court agrees with Plaintiff that, 1979)). Next, Plaintiff argues that the "one computer although the applicants repeatedly amended the program" limitation violates the "one or more rule," language of the preambles, these amendments were which states as a general rule that "a" can mean "one or made to conform the language of the preambles to more" unless the intrinsic record requires otherwise. similar amendments made in the claims themselves; the See id. at 23 (quoting Baldwin Graphic Sys., Inc. v. preambles were not amended in isolation to obtain Siebert, Inc., 512 F.3d 1338, 1342-43 (Fed. Cir. 2008)). issuance of the '482 Patent. Second, the Court finds that Here, Plaintiff asserts that nothing in the intrinsic record the preambles do not contribute [*90] to the definition of supports limiting the "computer implemented method" to the claimed invention. Here, the Court has considered being executed in a single computer program. See id. whether the preamble "recites essential structure that is Rather, Plaintiff argues that the Mobile Phone important to the invention or necessary to give meaning Page 21 of 31 1 2012 U.S. Dist. LEXIS 186414, *90 to the claim." See Bicon, Inc. v. Straumann Co., 441 present in the claim. See,e.g., Goldenberg v. Cytogen, F.3d 945, 952 (Fed. Cir. 2006); see also Boehringer Inc., 373 F.3d 1158, 1164 n.2 (Fed. Cir. 2004) Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., (construing preamble as claim limitation, where the 320 F.3d 1339, 1345 (Fed. Cir. 2003) (finding that the preamble recited "intracellular marker substance" and "growing" and "isolating" limitations from the preamble the claim recited only "said marker substance"). Accord were the essence of the claimed invention and were Bell Commc'ns Research, Inc. v. Vitalink Commc'ns omitted from the claim language, such that the preamble Corp., 55 F.3d 615, 621 (Fed. Cir. 1995) (construing a served as a claim limitation). The Court finds that the preamble which recited a "packet. . . said packet preamble is not necessary to an understanding of the including a source address and destination address" as claimed invention because each of its limitations— a claim limitation where the claim recited only "said including a "computer implemented method," "of pre- packet," without regard to whether the packet included processing digital content in a client device" and "for "a source address and destination address"). As such, subsequent electronic publishing"—is expressly or while the preamble provides an antecedent basis for implicitly disclosed by the claim language. As such, the subsequent claim terms, it does not thereby "limit[] the claims recite "pre-processing" using pre-processing claim [*93] terms." See C.R. Bard, Inc., 157 F.3d at parameters controlling a client device, and transmission 1350. "for subsequent publishing." See, e.g., '482 Patent claim 1. As to the "computer implemented method" limitation, Based on the foregoing, the Court finds that the the Court acknowledges that the claims do [*91] not preamble language "a computer implemented method of expressly recite pre-processing by a computer pre-processing digital content in a client device for implemented method. Nevertheless, the Court finds— subsequent electronic publishing" is not subject to and no Defendant has disputed—that a person of construction as a claim limitation. ordinary skill in the art reading the claims of the '482 10. "receiving. . . from a remote device" or "received Patent would understand that a method for pre- from a device separate from a client device" or processing digital content by a client device in "provided to said client device by a device separate from preparation for transmission to another device would be said client device" a computer implemented method. The Court also recognizes that the "receiving" and "transmitting" steps Go to table10 of the claims at issue do not recite receipt or transmission by a client device, though the prosecution Plaintiff argues that the phrases "receiving. . . from a history indicates that these steps must be performed by remote device," "received from a device separate from a the client device. The Mobile Phone Defendants client device," and "provided to said client device by a suggest that this separation between the claim language device separate from said client device" do not require and the prosecution history may be resolved by separate construction, particularly since the Court has reference to the preamble, such that the preamble must been asked to construe the terms "remote device" and be read as a claim limitation. The Court disagrees. "device separate from said client device." See Pl.'s Though the preamble recites "pre-processing digital Opening Br. 30, ECF No. 106. For their part, the Mobile content in a client device," the preamble is silent as to Phone Defendants propose the definition "the 'pre- the location of the "receiving" and "transmitting" steps. processing parameters' are [*94] received by the client Because the preamble adds nothing to the reader's as part of the 'computer implemented method of understanding of the "receiving" and "transmitting" preprocessing digital content in a client device.'" See steps, the alleged deficiencies in these claim steps Mobile Phone Defs.' Opening Br. 24, ECF No. 115. cannot [*92] be used to justify treating the preamble as limiting the claim. Here, the Mobile Phone Defendants essentially argue that the language of the preamble—which recites a Finally, the Court finds that the preamble is not a claim "computer implemented method of pre-processing limitation merely because its reference to "a client digital content in a client device"—should be included as device" provides an antecedent basis for the claim term a part of the definition of the "receiving," "received," and "said client device." Unlike the cases cited by the Mobile "provided to" phrases in claims 1, 13, and 38 of the '482 Phone Defendants, this is not a situation in which the Patent. See generally id. The Court has already claim language refers the reader to a term first used in determined that the language of the preamble is not the preamble to supply a limitation not otherwise subject to construction as a claim limitation, and thus Page 22 of 31 1 2012 U.S. Dist. LEXIS 186414, *94 should not be imported onto the claim language. See image of an image file that has been dragged and supra Part III.9. In addition, the Court finds no other dropped." See id. (quoting '557 Patent, abstract, col.4 support for imposing this language as a limitation on the ll.7-13) (emphasis added). Here, the Web Defendants claim terms at issue. Accordingly, the Court declines to emphasize that a preview image of the digital content is construe the "receiving," "received," and "provided to" not displayed until after the content has been selected. phrases as "part of the 'computer implemented method See id. Plaintiff responds that the Web Defendants' of pre-processing digital content in a client device.'" proposed construction adds sequencing requirements Furthermore, the Court agrees with Plaintiff that these and a "for upload" limitation [*97] that are not supported phrases do not require additional construction, since by the claim language. See Pl.'s Resp. to Web Defs. 27, their component parts—with the exception of the ECF No. 120. [*95] straightforward terms "receiving," "received," and "provided to"—have already been construed. Here, the The Court begins by noting that claim 35 of the '482 Court notes that the Mobile Phone Defendants' Patent, the only claim at issue, recites in relevant part: proposed construction, while attempting to incorporate (1) "receiving a command. . . said received command the "computer implemented method" limitation, did enabling selection of digital content"; (2) "pre-processing nothing to define the terms "receiving," "received," or said selected digital content"; (3) "displaying a preview "provided to," such that the meaning of these terms has of said selected digital content"; and (4) "transmitting a not been placed in dispute. See Mobile Phone Defs.' message that includes said pre-processed digital Opening Br. 24, ECF No. 115. content." See '482 Patent claim 35. As the Web Defendants argue, this claim language indicates that a Based on the foregoing, and incorporating its "preview of. . . digital content" may be displayed only construction of "remote device" and "device separate after the digital content is "selected." Importantly, from a client device," the Court finds that: "receiving. . . however, the claim language does not support the from a remote device" means "receiving from a device further limitation of "for upload." Rather, the claims not co-located with the client device"; "received from a indicate that the "selection" which occurs in the first step device separate from a client device" means "received is selection of the digital content to be pre-processed in from a device other than the client device"; and the second step, a concept clearly described in the "provided to said client device by a device separate from claim language itself. The portions of the written said client device" means "provided to said client device description cited by the Web Defendants support this by a device other than said client device." construction. 11. "displaying a preview image of said selected digital Based on the foregoing, the Court finds that "displaying content" a preview image of said selected digital content" means [*98] "displaying a preview image of the digital content Go to table11 after the digital content has been selected." Plaintiff [*96] simply argues that "displaying a preview 12. "pre-processing in accordance with one or more pre- image of said selected digital content" is a processing parameters that have been stored in straightforward phrase that should be given its plain memory of said client device" and similar terms meaning or construed as "displaying a preview image of the selected digital content." See Pl.'s Resp. to Web Go to table12 Defs. 27, ECF No. 120. The Web Defendants critique Plaintiff's proposed construction for leaving open the Finally, the parties dispute the meaning of "pre- possibility that a preview image will be displayed before processing in accordance with one or more pre- an image is selected. See Web Defs.' Opening Br. 28- processing parameters that have been stored in 29, ECF No. 108. memory of said client device" and a number of similar terms. See, e.g., Pl.'s Opening Br. 22, ECF No. 106. The Web Defendants argue that their proposal of Plaintiff argues that each of these terms has unique "displaying a preview image after the digital content has meaning and does not require construction in light of the been selected for uploading" is required by the plain Court's construction of the underlying phrases used claim language and the specification, which describes therein. See id. For their part, the Web Defendants the invention as allowing the user to "confirm [a] suggest that these [*99] terms be construed as "'pre- submission, for example by generating a thumb nail processing' the identified digital content at the client Page 23 of 31 1 2012 U.S. Dist. LEXIS 186414, *99 device, the 'preprocessing' being controlled by the processing occurs." See Web Defs.' Opening Br. 23-24, received 'pre-processing parameters,' and not by the ECF No. 108. The Web Defendants argue that the claim user, during the interaction of the client and 'remote language, such as "said received pre-processing device.'" See Web Defs.' Opening Br. 23, ECF No. 108. parameters controlling said client device," demonstrates The Mobile Phone Defendants, by contrast, suggest a that pre-processing is controlled not by the user but by construction of "the 'remote device' directs the 'pre- the pre-processing parameters. See id. at 24. According processing' during interaction with the client device, to the Web Defendants, the prosecution history also based on the 'pre-processing parameters.'" See Mobile supports this view, given that the applicants Phone Defs.' Opening Br. 18, ECF No. 115. distinguished the Hui prior art on the basis that "Hui does not describe a remote device directing an Plaintiff argues that it is not necessary to construe these application of specific coloring to an image. Instead, the terms because their main components—such as "pre- user controls the specific coloring using the correction processing" and "pre-processing parameters"—have process tools made available to the user." See id. at 25- already been construed, while the remaining words— 26 (quoting App. Supp. Web Defs.' Opening Br. ('482 such as "in," "accordance," and "with"—are simple and Patent, Resp. Office Action of Jan. 22, 2010), at App. can be given their plain, ordinary meaning. See Pl.'s 204-05, ECF No. 114-4). The Web Defendants Opening Br. 23, ECF No. 106. The Web Defendants [*102] argue that this statement disclaims any system criticize Plaintiff for suggesting a word-by-word definition in which a user selects the pre-processing parameters of the disputed terms, rather than an overall or uses "'tools made available to the user' with construction which considers the context of the claim parameters pre-programmed into the tool to make terms. See Web Defs.' Responsive Br. 24-25, ECF No. selections." See id. Referring to their proposal that "pre- 117. Here, the Web Defendants argue that the claims, processing parameters" are stored in HTML text, the while using slightly [*100] different language, all convey Web Defendants further argue that pre-processing the claim limitation that the pre-processing is controlled "using" or "in accordance with" such parameters occurs by pre-processing parameters, not the user. See id. at "during the interaction" between the user's device and 25. Next, the Web Defendants argue that their proposed the remote web server, and not at times when the two construction was merely intended to highlight the devices are not interacting. See id. at 26. commonalities between the disputed terms, but not to erase elements which differ between the claims. See id. Plaintiff responds that the Web Defendants' proposed at 25. Accordingly, the Web Defendants' response brief construction is improper because it ignores the contains a chart demonstrating how their proposed presumption that claims which use different words or construction may be supplemented by the unique terms phrases have different meanings and scope. See Pl.'s of each disputed claim. See id. at 26-27. For their part, Opening Br. 24, ECF No. 106; see also Pl.'s Resp. to the Mobile Phone Defendants argue that Plaintiff's Web Defs. 22-23, ECF No. 120. So, for example, concern about imposing a single construction on Plaintiff argues that Defendants' construction ignores multiple terms with different claim language does not key differences between claims of the '482 Patent, such apply in their case, since the Mobile Phone Defendants as claim 16—which requires pre-processing parameters only seek construction of two nearly identical claim to "have been stored in memory"—and claim 18—which terms. See Mobile Phone Defs.' Responsive Br. 18, states that pre-processing parameters are "downloaded ECF No. 118. The Mobile Phone Defendants also to" the client device. See Pl.'s Opening Br. 24, ECF No. criticize Plaintiff's opening brief for failing to address the 106 [*103] (quoting '482 Patent claims 16, 18). Plaintiff meaning of the phrase "controlling said client device." also criticizes the Web Defendants' "and not by the user See id. at 19. Finally, the Mobile Phone Defendants limitation," by arguing that: (1) while the claims of the contend that Plaintiff's construction is circular, '482 Patent state that the pre-processing parameters impossible for a jury to understand or apply, [*101] and "control" the client device in conducting pre-processing, disregards the impact of statements made by the the claims do not preclude any and all selection by the applicant in the prosecution history. See Mobile Phone user; and (2) this limitation does nothing to define the Defs.' Opening Br. 20, ECF No. 115. disputed term "controlled." See Pl.'s Resp. to Web Defs. 23, ECF No. 120. Next, Plaintiff argues that the Web In support of their construction, the Web Defendants Defendants misread the prosecution history. See id. argue that the parties' dispute, as in the "without user According to Plaintiff, the applicants distinguished Hui selection context," is "whether the asserted claims cover not on the basis of user selection but on the grounds systems in which user selections control what pre- that: (1) Hui does not modify the underlying image data, Page 24 of 31 1 2012 U.S. Dist. LEXIS 186414, *103 and (2) Hui does not use pre-processing parameters instance, Plaintiff notes that the claims require the from a remote device, as opposed to standalone remote device to direct and control pre-processing, but software on a user's computer. See id. at 24-25 (quoting argues that such control may be effectuated after the App. Supp. Pl.'s Opening Br. ('482 Patent, Resp. Office client device receives the pre-processing parameters Action of Jan. 22, 2010), at App. 99-100, ECF No. 113). and without regard to whether the client device and In sum, Plaintiff argues that the prosecution history did remote device are still "interacting." See id. Plaintiff also not disclaim any user selection that affects pre- argues that the "during [*106] the interaction" limitation processing, but disclaimed a system in which the user— conflicts with claims 16, 17, and 18 of the '482 Patent, as opposed to a remote device—has total control over which describe the use of pre-processing parameters the [*104] pre-processing parameters. See id. Finally, that were "previously downloaded to said client device," Plaintiff rejects the Web Defendants' "during the "downloaded to said client device," and "stored in interaction" limitation as being unclear and unsupported memory of said client device" respectively. See id. by the claim language. See id. at 26-27. (quoting '482 Patent claim 16). Next, Plaintiff criticizes the Mobile Phone Defendants' reference to the The Mobile Phone Defendants' opening brief, like that of Examiner's use of the language "during communication the Web Defendants, focuses on the term "controlling." with [the] server]," noting that: (1) the Examiner was See Mobile Phone Defs.' Opening Br. 18-20, ECF No. describing the prior art, not the current invention, and (2) 115. Citing the prosecution history, the Web Defendants the applicants distinguished their invention from the note that Plaintiff distinguished the Hui prior art on the prior art without limiting their invention to pre-processing basis that it: "during communication with [the] server." See id. [D]oes not process digital content using pre- (quoting App. Supp. Pl.'s Resp. to Mobile Phone Defs. processing parameters received from a remote ('482 Patent, Resp. Office Action July 10, 2009), at App. device, the pre-processing parameters controlling a 180-81, ECF No. 122-2). placement of the digital content in a specified form for publication. . . . Control is not effected by a The Court begins with the claim language at issue. As remote device. For example, Hui does not describe demonstrated by the chart of claims included in the Web a remote device directing [preprocessing of digital Defendants' briefing, the disputed claims contain a wide content]. variety of claim limitations. See Web Defs.' Responsive Br. 26-27, ECF No. 117. Accordingly, the claims recite See id. (quoting App. Supp. Mobile Phone Defs.' pre-processing either "using" or "in accordance with" Opening Br. ('482 Patent, Resp. Office Action of Jan. [*107] pre-processing parameters, while only some 22, 2010), at App. 43-44, ECF No. 116-4). According to claims recite the additional limitation of the pre- the Web Defendants, this prosecution history shows that processing parameters "controlling" the client device. "control[]" of the client device must be "effected by a See id. Likewise, the claims describe a number of ways remote device" while the remote device is "directing" the in which the client device obtains the pre-processing pre-processing, such that "control" [*105] must occur parameters, including that the pre-processing during the interaction between the remote device and parameters "have been previously downloaded," "have the client device. See id. at 19. The Web Defendants been downloaded to said client device prior to said contend that the Patent Office also understood the identification," "have been stored in memory of said current invention to be limited to pre-processing "during client device prior to said identification," "are received," communications with [the] server." See id. (quoting App. "were provided," "have been provided," or "being Supp. Mobile Phone Defs.' Opening Br. ('482 Patent, provided." In essence, the Web Defendants argue that Office Action of Apr. 19, 2009), at App. 62-63, ECF No. all of the claims at issue should be construed to include 116-4). three limitations: (1) pre-processing "being controlled" In response to the Mobile Phone Defendants, Plaintiff by the pre-processing parameters, (2) the client device rejects the suggestion that a remote device may control obtaining the pre-processing parameters "during the a client device in conducting pre-processing only if the interaction of the client device and the remote device," pre-processing occurs during the interaction of the two and (3) pre-processing "not being controlled by the devices. See Pl.'s Resp. to Mobile Phone Defs. 16-19, user." See id. The Mobile Phone Defendants join in ECF No. 122. According to Plaintiff, this construction is proposing the second limitation. For the reasons contradicted by a common sense reading of the claim discussed below, the Court rejects each of these language and the prosecution history. See id. So, for proposed limitations as lacking support in the language Page 25 of 31 1 2012 U.S. Dist. LEXIS 186414, *107 of the claims or the intrinsic record. [*108] In addition, user" where "[c]ontrol is not effected by a remote the Court essentially agrees with Plaintiff that the device." See App. Supp. Web Defs.' Opening Br. ('482 disputed claim phrases do not need construction Patent, Resp. Office Action of Jan. 22, 2010), at App. because they may be understood by reference to the 204-05, ECF No. 114-4 (emphasis added). While Court's construction of their constituent claims and to emphasizing that control is effected by a remote device the plain and ordinary meaning of the remaining terms. in its "controlling" claims, the applicants did not discuss Importantly, however, given the Web Defendants' the concept of "control" in the context of claims that contention that the remaining claim terms include within recite pre-processing merely "using" or "in accordance their scope the three proposed limitations described with" pre-processing parameters." See generally id. above, the Court finds it necessary to address the Based on the foregoing, the Court finds no support in proposed limitations and to construe some of the the claim language or the prosecution history for remaining claim terms in order to resolve the parties' imposing the "controlling" limitation onto claims that do dispute over the scope of these claims. See O2 Micro not recite this limitation. Accordingly, the Court rejects Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d the Web Defendants suggestion that "using" and "in 1351, 1361 (Fed. Cir. 2008). accordance with" should be effectively equated with "controlling." Employing the plain and ordinary meaning Before analyzing the Web Defendants' proposed of the former terms, the Court finds that "using" and "in limitations, the Court begins by construing the term accordance with" mean "employing" and "to conform to" "controlling." The Mobile Phone Defendants have respectively. [*111] See, e.g., Oxford English attempted to define the "controlling" limitation to mean Dictionary, www.oed.com ("use," "accordance," and "in that "the 'remote device' directs" the pre-processing. accordance with"). In the context of the controlling The Court agrees with the basic concept that claims, the Web Defendants also suggest a "not by the "controlling" means "directing," but disagrees that the user" limitation. As discussed above, the applicants claim term should be defined to require "directing" by distinguished the Hui prior art on the basis that it the remote device. In the prosecution history cited by involved control directed "solely" by a user where, in the the [*109] Mobile Phone Defendants, the applicants present invention, control was "effected" by a remote explained that—in a claim reciting "controlling"—the device. While this statement explicitly disavows user- remote device directs the pre-processing because it only direction of the pre-processing, the Court finds it furnishes the pre-processing parameters which, in turn, does not rise to the level of a clear and unmistakable control the client device in conducting the pre- disavowal of any user participation, since it leaves open processing. See App. Supp. Mobile Phone Defs.' the possibility that control is effected both by the user Opening Br. ('482 Patent, Resp. Office Action of Jan. and the remote device. See Thorner v. Sony Computer 22, 2010), at App. 43-44, ECF No. 116-4. The Entm't Am. LLC, 669 F.3d 1362, 1365-68 (Fed. Cir. applicants expressed this concept in the "controlling" 2012). Based on the foregoing, the Court finds that the claims by claiming "pre-processing. . . using. . . pre- "controlling" terms merely require that the pre- processing parameters, said. . . pre-processing processing parameters "direct" the pre-processing, but parameters controlling said client device." See, e.g., 482 should not include a further "not by the user" limitation. Patent claim 1. Based on the foregoing, the Court adopts the Mobile Phone Defendants' suggestion that Finally, the Court considers the Defendants' joint "controlling" means "directing," but rejects the further proposal of a "during the interaction" limitation. The Web "the remote device" limitation. See, e.g., Oxford English Defendants argue that, because the pre-processing Dictionary, www.oed.com ("control"). parameters are delivered in HTML [*112] code, these parameters can be employed to control the pre- Moving to the Web Defendants' proposed limitation, the processing only during the interaction of the client and Court begins with the first and third limitations proposed the remote device. See Web Defs.' Opening Br. 26, ECF by the Web Defendants. The Court disagrees that the No. 108. As discussed previously, the Court has prosecution history requires imposing either a rejected the Web Defendants' attempt to define the "controlling" limitation on claims that do not recite preprocessing parameters as values contained in HTML "controlling" or a limitation that requires control to be text, and has otherwise refused to read the preferred "not by [*110] the user." In the prosecution history cited web site embodiment onto the broadly drafted claims of by the Web Defendants, the applicants distinguished its the '482 Patent. See, e.g., supra Part III.3. Furthermore, "controlling" claims from the Hui prior art on the basis the Court finds that the broad language of the claims that Hui involved modifications "directed solely by the contradicts the "during the interaction" proposal. As Page 26 of 31 1 2012 U.S. Dist. LEXIS 186414, *112 Plaintiff points out, claim 16 of the '482 Patent states (6) "remote device" means "device not co-located with that preprocessing parameters "received" in claim 13 the client device," and "device separate from said client must have been "previously downloaded," such that pre- device" means "device other than said client device"; processing may occur at any time after the pre- processing parameters have been obtained, regardless (7) "information that enables identification of a user" and of whether the local device is still interacting with the "user identifier" mean "information related to a person remote device. See '482 Patent claims 13, 16. Based on that enables identification of that person," while "user the foregoing, the Court refuses to adopt Defendants' information" means "information related to a person"; proposed "during the interaction" limitation. (8) "publishing" and "publication" mean "making publicly With regard to the disputed claim terms, the Court finds available"; that "controlling" means "directing"; "using" means (9) "a computer implemented method of pre-processing "employing"; and "in [*113] accordance with" means "to digital content in a client device for subsequent conform to." As to the remaining claim terms, the plain electronic [publishing / distribution]" is not subject to and ordinary meaning governs unless the Court has construction as a claim limitation; specifically construed a term or phrase elsewhere in this Order. (10) "receiving. . . from a remote device" means "receiving from a device not co-located with the client device"; "received from a device separate from a client IV. CONCLUSION device" means "received from a device other [*115] than the client device"; and "provided to said In summary, the Court construes the disputed terms client device by a device separate from said client from the '557 and '482 patents as follows: device" means "provided to said client device by a (1) "pre-processing" means "modifying the [media object device other than said client device"; data / digital content data], as opposed to data merely (11) "displaying a preview image of said selected digital associated with the [media object / digital content], at content" means "displaying a preview image of the the client or local device in preparation for transmission digital content after the digital content has been to a remote device"; selected"; and (2) "pre-processing parameters" and "parameters used (12) in "pre-processing in accordance with one or more to control the pre-processing" mean "values directing pre-processing parameters that have been stored in the pre-processing"; memory of said client device" and similar terms, (3) "pre-processing the media object by the media "controlling" means "directing"; "using" means object identifier for the requirements of the third-party "employing"; and "in accordance with" means "to website, the pre-processing being done without conform to"; as to the remaining claim terms, the plain [additional] user selection of the preprocessing" means and ordinary meaning governs unless the Court has "pre-processing. . . without [additional] user input specifically construed a term or phrase elsewhere in this affecting what pre-processing occurs"; Order. (4) "pre-processing the media object. . . for the In addition, the parties have agreed on the construction requirements of the third-party web site" means "pre- of two claim terms, as follows: processing the media. . . into a format specified by a (13) "combining (including stitching) of multiple media web site, the web site being operated by a party other objects" means "combining media objects into one than: [*114] (1) the user, or (2) the party which provided media object, not simply associating one media object the operator of the web site with the code used to with another media object"; and include the media object identifier on the web site"; (14) "adding text or other annotation to the media (5) "placement of. . . digital content into a specified object" means "modifying the media object data to form" or "to place. . . digital content in a specified form" include text or other annotation, not simply means "modifying the digital content data to meet [*116] associating separate text or other annotation certain specifications"; with the media object." Page 27 of 31 1 2012 U.S. Dist. LEXIS 186414, *116 SO ORDERED on this 21st day of May, 2012. /s/ Reed O'Connor Reed O'Connor UNITED STATES DISTRICT JUDGE Page 28 of 31 1 2012 U.S. Dist. LEXIS 186414, *116 Table1 (Return to related document text) Plaintiff Web Defendants Mobile Phone Defendants "in preparation for transmission, "modifying the [media object data / "modifying the digital content at the modifying the underlying data of the data of the digital content] at the client device before transmitting to a media object [digital content] in browser before transmitting to a server device" accordance with the requirements of server device" another device" Table1 (Return to related document text) Table2 (Return to related document text) Plaintiff Web Defendants Mobile Phone Defendants plain meaning, or "values contained in HTML text that are passed to and direct the code that performs the pre-processing" "parameters for specifying the modification of the underlying data of the digital content [media object] to meet the requirements of another device" Table2 (Return to related document text) Table3 (Return to related document text) Plaintiff Web Defendants "pre-processing the media object using pre- "pre-processing the media object without the processing parameters obtained from another pre-processing being affected by user provided device and not pre-processing parameters values or selections" provided by the user" Table3 (Return to related document text) Table4 (Return to related document text) Plaintiff Web Defendants "pre-processing the media into a format "pre-processing the media into the standard format specified for the 'third-party web site'" required for publication by the 'third-party web site,'" or third-party web site: "pre-processing the media into the format required for publication, display, or distribution by the plain meaning, or 'third-party web site'" "a web site that is not stored at or hosted third-party web site: by the user" "a web site operated by a party other than the party that authored the media object identifier" Table4 (Return to related document text) Table5 (Return to related document text) Plaintiff Web Defendants Mobile Phone Defendants plain meaning, or "filling in a field in a webpage with the digital content" "modifying the underlying data of the digital content to meet certain specifications" Page 29 of 31 1 2012 U.S. Dist. LEXIS 186414, *116 Table5 (Return to related document text) Table6 (Return to related document text) Plaintiff Web Defendants Mobile Phone Defendants remote device: "device not co-located "web server" "web server that contains the with the client device" pre-processing parameters" device separate from said client device: "device other than the client device" Table6 (Return to related document text) Table7 (Return to related document text) Plaintiff Mobile Phone Defendants "information related to a person" "information related to a person, as opposed to a device" Table7 (Return to related document text) Table8 (Return to related document text) Plaintiff Mobile Phone Defendants plain meaning, or "making the digital content publicly available (e.g. posting the digital content on a web page)" "sharing" Table8 (Return to related document text) Table9 (Return to related document text) Plaintiff Mobile Phone Defendants no construction necessary "the steps of the claim performed on the client device are performed during the execution of one computer program" Table9 (Return to related document text) Table10 (Return to related document text) Plaintiff Mobile Phone Defendants no construction necessary "the 'pre-processing parameters' are received by the client as part of the 'computer implemented method of preprocessing digital content in a client device'" Table10 (Return to related document text) Table11 (Return to related document text) Plaintiff Web Defendants plain meaning, or "displaying a preview image after the digital content has been selected for uploading" "displaying a preview image of the selected digital content" Table11 (Return to related document text) Page 30 of 31 1 2012 U.S. Dist. LEXIS 186414, *116 Table12 (Return to related document text) Plaintiff Web Defendants Mobile Phone Defendants plain meaning, incorporating claim "'pre-processing' the identified "the 'remote device' directs the 'pre- terms as construed by the Court digital content at the client device, processing' during interaction with the 'preprocessing' being controlled the client device, based on the by the received 'pre-processing 'preprocessing parameters'" parameters,' and not by the user, during the interaction of the client and 'remote device'" Table12 (Return to related document text) End of Document Page 31 of 31