Lupercal LLC v. CitiBank, N.A.

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

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8 Neutral As of: November 13, 2019 3:43 PM Z B Summit 6 LLC v. HTC Corp. United States District Court for the Northern District of Texas, Wichita Falls Division March 21, 2015, Decided; March 21, 2015, Filed Civil Action No. 7:14-cv-00014-O; Civil Action No. 7:14-cv-00106-O Reporter 2015 U.S. Dist. LEXIS 179647 *; 2015 WL 11117868 O): Akarsh P Belagodu, D Clay Holloway, Jonathan D Olinger, Shayne E O'Reilly, PRO HAC VICE, Kilpatrick SUMMIT 6 LLC, Plaintiff, v. HTC CORPORATION et al., Townsend & Stockton LLP, Atlanta, GA; Bonnie M Defendants.SUMMIT 6 LLC, Plaintiff, v. APPLE INC., Grant, PRO HAC VICE, Kilpatrick Townsend Stockton Defendant. LLP, San Francisco, CA; Christopher Schenck, PRO HAC VICE, Kilpatrick Townsend & Stockton LLP, Prior History: Summit 6 LLC v. HTC Corp., 2014 U.S. Seattle, WA; Hsiwen Lo, PRO HAC VICE, Orrick Dist. LEXIS 126800 (N.D. Tex., Sept. 10, 2014) Herrington & Sutcliffe LLP, Irvine, CA; Jonathan E Harris, PRO HAC VICE, Kilpatrick Townsend & Counsel: [*1] For Summit 6 LLC, Plaintiff (7:14-cv- Stockton LLP, Winston Salem, NC; Michael K Hurst, 00014-O-O): Theodore Stevenson, III, LEAD Joshua M Sandler, Lynn Pinker Cox & Hurst LLP, ATTORNEY, Colleen Elizabeth Bloss, Cory A McAnelly, Dallas, TX; Steven D Moore, Kilpatrick Townsend & Mitchell Reed Sibley, Phillip M Aurentz, McKool Smith Stockton LLP, San Francisco, CA. PC, Dallas, TX; Douglas A Cawley, Richard Alan Kamprath, McKool Smith, Dallas, TX; Ashley N Moore, For Twitter Inc., Defendant (7:14-cv-00014-O): Leo L Colleen Elizabeth Bloss, Cory A McAnelly, Mitchell Lam, LEAD ATTORNEY, PRO HAC VICE, Keker & Van Reed Sibley, Phillip M Aurentz, McKool Smith PC, Nest LLP, San Francisco, CA; Brett C Govett, Norton Dallas, TX; Bradley W Caldwell, Caldwell Cassady Rose Fulbright US LLP, Dallas, TX; David J Silbert, Curry PC, Dallas, TX. PRO HAC VICE, Keker & Van Nest LLP, San Francisco, CA; Hsiwen Lo, PRO HAC VICE, Orrick Herrington & For HTC Corporation, HTC America Inc, Defendants Sutcliffe LLP, Irvine, CA; [*3] Julie Anne Duncan, Keker (7:14-cv-00014-O): Bryan K James, LEAD ATTORNEY, & Van Nest LLP, San Francisco, CA. Philip Ou, Paul Hastings LLP, Palo Alto, CA; Darryl John Ong, Mashhood Rassam, PRO HAC VICE, For Motorola Mobility LLC, Counter Claimant (7:14-cv- McDermott Will & Emery LLP, Menlo Park, CA E Leon 00014-O): Michael K Hurst, Joshua M Sandler, Lynn Carter, Carter Scholer Arnett Hamada & Mockler PLLC, Pinker Cox & Hurst LLP, Dallas, TX; Shayne E O'Reilly, Dallas, TX; Hsiwen Lo, PRO HAC VICE, Orrick PRO HAC VICE, Kilpatrick Townsend & Stockton LLP, Herrington & Sutcliffe LLP, Irvine, CA; Linda R Stahl, Atlanta, GA. Carter Scholer Arnett Hamada Mockler, PLLC, Dallas, For Summit 6 LLC, Counter Defendant (7:14-cv-00014- TX; Yar R Chaikovsky, Paul Hastings, Palo Alto, CA. O): Theodore Stevenson, III, LEAD ATTORNEY, For LG Electronics Inc, LG Electronics USA Inc, LG Douglas A Cawley, Richard Alan Kamprath, McKool Electronics MobileComm USA Inc, Defendants (7:14-cv- Smith, Dallas, TX; Ashley N Moore, Mitchell Reed 00014-O): Deborah L Sterling, Kemah, TX; Hsiwen Lo, Sibley, Phillip M Aurentz, McKool Smith PC, Dallas, TX; PRO HAC VICE, Orrick Herrington & Sutcliffe LLP, Bradley W Caldwell, Caldwell Cassady Curry PC, Irvine, CA; Robert M Isackson, PRO HAC VICE, Dallas, TX. Orrick [*2] Herrington & Sutcliffe LLP, New York, NY; For Twitter Inc., Counter Claimant (7:14-cv-00014-O): Stacey E Stillman, PRO HAC VICE, Orrick Herrington & Leo L Lam, LEAD ATTORNEY, PRO HAC VICE, Keker Sutcliffe LLP, Menlo Park, CA; Steven J Routh, PRO & Van Nest LLP, San Francisco, CA Brett C Govett, HAC VICE, Orrick Herrington & Sutcliffe LLP, Norton Rose Fulbright US LLP, Dallas, TX David J Washington, DC. Silbert, Julie Anne Duncan, Keker & Van Nest LLP, San For Motorola Mobility LLC, Defendant (7:14-cv-00014- Francisco, CA. 8 2015 U.S. Dist. LEXIS 179647, *3 For HTC America Inc, Counter Claimant (7:14-cv- Opinion 00014-O): Bryan K James, LEAD ATTORNEY, Philip Ou, Paul Hastings LLP, Palo Alto, CA; Darryl John Ong, Mashhood Rassam, PRO HAC VICE, McDermott Will & Emery LLP, Menlo Park, CA; E Leon Carter, Carter CLAIM CONSTRUCTION ORDER Scholer Arnett Hamada & Mockler PLLC, Dallas, TX; Linda R Stahl, Carter Scholer Arnett Hamada Before the Court are Plaintiff Summit 6, LLC's ("Summit Mockler, [*4] PLLC, Dallas, TX Yar R Chaikovsky, Paul 6" or "Plaintiff") Opening Claim Construction Brief and Hastings, Palo Alto, CA. Appendix in Support (ECF Nos. 217-18), filed December 29, 2014; Defendants Apple Inc. ("Apple"), HTC For HTC Corporation, Counter Claimant (7:14-cv- Corporation, HTC America, Inc. ("HTC"), LG Electronics 00014-O): Bryan K James, LEAD ATTORNEY, Philip Inc., LG Electronics U.S.A., Inc., LG Electronics Ou, Paul Hastings LLP, Palo Alto, CA; E Leon Carter, MobileComm, U.S.A., Inc. ("LG"), Motorola Mobility LLC Carter Scholer Arnett Hamada & Mockler PLLC, Dallas, ("Motorola"), and Twitter, Inc.'s ("Twitter") (collectively, TX; Linda R Stahl, Carter Scholer Arnett Hamada "Defendants") Opening Claim Construction Brief (ECF Mockler, PLLC, Dallas, TX; Mashhood Rassam, PRO No. 219), filed December 30, 2014; Plaintiff's HAC VICE, McDermott Will & Emery LLP, Menlo Park, Responsive Claim Construction Brief and [*6] Appendix CA; Yar R Chaikovsky, Paul Hastings, Palo Alto, CA. in Support (ECF Nos. 227-28), filed January 20, 2015; For Motorola Mobility LLC, Counter Claimant (7:14-cv- Defendants' Responsive Claim Construction Brief and 00014-O): Bonnie M Grant, Kilpatrick Townsend Appendix in Support (ECF No. 229), filed January 20, Stockton LLP, San Francisco, CA; Michael K Hurst, 2015; Defendants' Reply Brief (ECF No. 234), filed Joshua M Sandler, Lynn Pinker Cox & Hurst LLP, February 3, 2015; and Plaintiff's Sur-Reply Brief (ECF Dallas, TX; Shayne E O'Reilly, PRO HAC VICE, Akarsh No. 235), filed February 6, 2015. A hearing was held on P Belagodu, D Clay Holloway, Kilpatrick Townsend & this matter on March 4, 2015. See Hr'g Tr., ECF No. Stockton LLP, Atlanta, GA Steven D Moore, Kilpatrick 259. Townsend & Stockton LLP, San Francisco, CA. For Summit 6 LLC, Plaintiff (7:14-cv-00106-O): Douglas I. BACKGROUND A Cawley, LEAD ATTORNEY, Richard Alan Kamprath, Theodore Stevenson, III, McKool Smith, Dallas, TX; Plaintiff is the current owner of three Patents-in-Suit: Ashley N Moore, Colleen Elizabeth Bloss, Mitchell Reed United States Patent Number 6,895,557 (the "'557 Sibley, Phillip M Aurentz, McKool Smith PC, Dallas, TX; patent"), United States Patent Number 7,765,482 (the Bradley W Caldwell, Caldwell Cassady Curry PC, "'482 patent"), and United States Patent Number Dallas, TX. 8,612,515 (the "'515 patent"). For Apple Inc, Defendant [*5] (7:14-cv-00106-O): Mark A Finkelstein, LEAD ATTORNEY, PRO HAC VICE, The parties seek construction of nine sets of terms Jones Day, Irvine, CA; Mark D Selwyn, LEAD appearing in the Patents-in-Suit: (1) "pre-processing"; ATTORNEY, PRO HAC VICE, Wilmer Cutler Pickering (2) "server device," "host server," "remote device," Hale and Dorr LLP, Palo Alto, CA; Douglas L Clark, "remote server," "a device separate from said client Jones Day, San Diego, CA; Frank P Cote, William C device," and "distributing party"; (3) terms relating to the Rooklidge, PRO HAC VICE, Jones Day, Irvine, CA; receipt, provision, or transmission of pre-processing Hilda C Galvan, Jones Day, Dallas, TX; Jason Kipnis, parameters; (4) terms relating to the preambles of the PRO HAC VICE, Wilmer Hale, Palo Alto, CA; Kevin S '482 and '515 patents; (5) "distributing," "distribution"; (6) Prussia, PRO HAC VICE, Wilmer Cutler Pickering Hale "said identification"; (7) "said client device"; (8) "media and Dorr LLP, Boston, MA; Matthew Philip Chiarizio, object identifier"; and (9) "code means. . . for enabling a Haynes and Boone LLP, Dallas, TX. receipt of an identification of one or more image files, video files or audio files to associate with said account." Judges: Reed O'Connor, UNITED STATES DISTRICT JUDGE. II. LEGAL STANDARD Opinion by: Reed O'Connor Patent infringement is [*7] the unauthorized making, using, selling, offering to sell, or importing into the Page 2 of 28 8 2015 U.S. Dist. LEXIS 179647, *7 United States of any patented invention during the term it is the single best guide to the meaning of a disputed of the patent. 35 U.S.C. § 271(a). In a patent term." Phillips, 415 F.3d at 1315 (internal quotation infringement case, a court first determines the proper marks omitted). The specification acts as a dictionary construction of the patent claims, establishing the scope when it expressly or implicitly defines terms. Id. at 1321. and boundaries of the subject-matter of the patent as a Courts should also refer to the prosecution history, if it is matter of law. Markman v. Westview Instruments, Inc., in evidence. Vitronics Corp. v. Conceptronic, Inc., 90 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 F.3d 1576, 1582 (Fed. Cir. 1996). The prosecution U.S. 370, 384-85, 116 S. Ct. 1384, 134 L. Ed. 2d 577 history is part of the intrinsic record and consists of a (1996); Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. complete record of all [*9] proceedings before the Ct. 831, 835, 190 L. Ed. 2d 719 (2015). The trier of fact United States Patent and Trademark Office, including will then be called upon to compare the properly prior art cited during the examination of the patent, and construed claims to the allegedly infringing devices in express representations made by the applicant as to the order to determine whether there has been scope of the claims. Id. at 1582-83. infringement. Markman, 52 F.3d at 976. The Federal Circuit has also stated that district courts The claims of a patent are the numbered paragraphs at may "rely on extrinsic evidence, which consists of all the end of the patent that define the scope of the evidence external to the patent and prosecution history, invention, and thus the scope of the patentee's right to including expert and inventor testimony, dictionaries, exclude others from making, using, or selling the and learned treatises." Phillips, 415 F.3d at 1317 patented invention. See Astrazeneca AB v. Mut. Pharm. (internal quotation marks omitted). Dictionaries and Co., 384 F.3d 1333, 1335-36 (Fed. Cir. 2004). Claim treatises can be "useful in claim construction"; in construction is the process of giving proper meanings to particular, technical dictionaries may help the court "to the claim language thereby defining the scope of the better understand the underlying technologyand the protection. See Bell Commc'ns Research, Inc. v. Vitalink wayin which one of skill in the art might use the claim Commc'ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995). terms." Id. at 1318 (internal quotation marks omitted). As to expert testimony, the Federal Circuit has stated: Claim construction starts with the language of the claim itself because a patent's claims define the invention to [E]xtrinsic evidence in the form of expert testimony which the patentee is entitled the right to exclude. can be useful to a court for a variety of purposes, Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. such as to provide background on the technology at 2005) (en banc). "[T]he claims themselves provide issue, to explain how an invention works, to ensure substantial guidance as to the meaning of particular that the court's understanding of the technical claim terms." Id. at 1314. [*8] Moreover, claim terms aspects of the patent is consistent with that of a should be given their ordinary and customary meaning person of skill in the art, or to establish that a as understood by a person of ordinary skill in the art as particular term in the [*10] patent or the prior art of the effective filing date of the patent application. Id. at has a particular meaning in the pertinent field. 1313. This is because a patent is addressed to, and intended to be read by, others skilled in the particular Id. However, "a court should discount any expert art. Id. However, the patentee is free to disavow the testimony that is clearly at odds with the claim ordinary meaning of a term and define his own terms, so construction mandated by the claims themselves, the long as any special definition given to a term is clearly written description, and the prosecution history, in other set forth in the specification or prosecution history. Hill- words, with the written record of the patent." Id. (internal Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 quotation marks omitted). Extrinsic evidence is less (Fed. Cir. 2014), cert. denied, 135 S. Ct. 719, 190 L. Ed. significant than the intrinsic record and undue reliance 2d 463 (2014). on it may pose a risk of changing the meaning of claims, contrary to the public record contained in the written When construing disputed claim terms, a court should patent. Id. at 1317, 1319. look first to the intrinsic record of the patent, including the claims and the specification, to determine the Where the meaning of a claim is unclear, the claim may meaning of words in the claims. Nazomi Commc'ns, Inc. be indefinite under 35 U.S.C. § 112, ¶ 2. "[A] patent is v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. invalid for indefiniteness if its claims, read in light of the 2005). "[T]he specification is always highly relevant to specification delineating the patent, and the prosecution the claim construction analysis. Usually, it is dispositive; history, fail to inform, with reasonable certainty, those Page 3 of 28 8 2015 U.S. Dist. LEXIS 179647, *10 skilled in the art about the scope of the invention." construction should address the same three questions Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. discussed in the previous Summit 6 case: what material 2120, 2124, 189 L. Ed. 2d 37 (2014). "The definiteness is pre-processed, where the pre-processing occurs, and requirement, so understood, mandates clarity, while where the material is transmitted. Defendants do not recognizing that absolute precision is unattainable. The. contest the content of the Court's prior resolution of. . certainty which the law requires in patents is not these questions; instead, they suggest that the greater than is reasonable, having regard to their elaborations are not necessary to the construction of subject-matter." Id. at 2129 (internal quotation marks pre-processing. Defs.' Resp. Br. 4-5, ECF No. 229; see omitted). also Hr'g Tr. at 14:25-15:8, ECF No. 259. 1. Defendants' Initial Proposed Construction III. CLAIM [*11] CONSTRUCTION ANALYSIS The Court turns first to Defendants' initial proposed construction. [*14] Defendants suggest, citing Merriam- Webster's Collegiate Dictionary, that the prefix "pre-" in A. "Pre-processing" "pre-processing" indicates that the material must be modified in some way before it undergoes processing. Go to table1 Defs.' Open. Br. 17, ECF No. 219. They define "processing" broadly to include the transmission, Plaintiff argues that the Court should adopt substantially uploading, transporting, publishing, and distribution of the same construction of the "pre-processing" term as in material. Id.; Defs.' Resp. Br. 4, ECF No. 229. the previous Summit 6 case. See Summit 6 LLC v. Defendants further contend that their construction is Research in Motion Corp., No. 3:11-cv-367-O, 2012 superior because Plaintiff's requirement that material U.S. Dist. LEXIS 186414, at *12-31 (N.D. Tex. May 21, must be modified in preparation only for "transmission" 2012) (O'Connor, J.) [hereinafter "previous Summit 6 contradicts the claims. Defs.' Open. Br. 17-19, ECF No. case"].3 Defendants contend that "modification before 219 (citing Phillips, 415 F.3d at 1314). Defendants note further processing" better reflects the plain meaning of that claims 1, 36, and 37 of the '482 patent provide that, the term. Defs.' Open. Br. 17, ECF No. 219. In the subsequent to modification, material could be alternative, Defendants would accept Plaintiff's "distributed" or "published" instead of being proposed construction with the phrase "prior to" "transmitted." Id. at 17; Defs.' App. Supp. Open. Br. Ex. replacing the "in preparation for" phrase. Defs.' Resp. 3 ('482 patent), claims 1, 36-37, App. 49, 51, ECF No. Br. 5, ECF No. 229. 219-1. Thus, they conclude that "modification before further processing" is the most accurate construction. The briefing [*13] reflects two primary points of contention regarding the "pre-processing" claim term. Plaintiff responds that, in every instance of "pre- First, although the parties agree that "pre-processing" processing" in the claims, the modified material first is involves the modification of material, the parties offer transmitted. Pl.'s Resp. Br. 5-6, ECF No. 227. After different constructions to describe what happens to the transmission to another location, the material [*15] may material subsequent to modification. In Summit 6's then be distributed or published, but this stage is not proposal, the material is modified "in preparation for required. Id.; see, e.g., '482 patent, claim 1(d), App. 49, transmission." In Defendants' alternate proposals, the ECF No. 219-1 ("transmitting said pre-processed group material is modified either "before further processing" or of one or more items of digital content to said server "prior to transmission." Defs.' Open. Br. 16, ECF No. device for subsequent publishing. . .") (emphasis 219; Defs.' Resp. Br. 5, ECF No. 229. The parties also added). Thus, Plaintiff argues that its proposed disagree as to whether the "pre-processing" construction does not contradict the claims and instead gives a more specific definition of the "pre-processing" claim term. 3 The only change Plaintiff proposes to the construction of Plaintiff further objects that Defendants improperly rely "pre-processing" in the previous Summit 6 case is the addition on dictionary definitions over the intrinsic record. Pl.'s of "one or more image files, video files, or audio files" to the bracketed portion of the construction, in order to make the Resp. Br. 5-6, ECF No. 227; Pl.'s Open. Br. 10-13, ECF construction consistent with the language in the '515 patent No. 217. Reliance on dictionaries, particularly non- claims. See Joint Status Report Ex. A (Proposed Claim technical dictionaries, risks altering the meaning of the Constructions & Evidence) n.1, ECF No. 232. claim beyond what it would mean to a person skilled in Page 4 of 28 8 2015 U.S. Dist. LEXIS 179647, *15 the particular art in the context of the patent. See The Court finds that Plaintiff posits a more specific Phillips, 415 F.3d at 1319-24. Instead, the specification definition of the "pre-processing" claim term. See Pl.'s or prosecution history should be the primary support for Open. Br. 6-10, ECF No. 217. Plaintiff's construction a proposed construction. See id. The Court agrees with provides that every instance of pre-processing [*18] Plaintiff that the intrinsic record should be the primary involves the "modification" of material before the support for a proposed construction. See id. material is "transmitted" to another location. Id. This description is based upon the claims and provides Plaintiff next argues that Defendants' vague helpful specificity and scope to the relevant claims. See interpretation of "pre-processed" could lead to jury [*16] Nautilus, 134 S. Ct. at 2124. The Court further confusion. See Pl.'s Open. Br. 6-10, ECF No. 217; Pl.'s determines that the inclusion of what material is Resp. Br. 6, ECF No. 227. Indeed, Defendants note that transmitted where, in answer to the questions at issue in Plaintiff's counsel misconstrued the meaning of the previous Summit 6 case, adds helpful clarification to Defendants' initial construction in its Opening Claim the term without imposing extraneous limitations on the Construction Brief. See Defs.' Resp. Br. 4, ECF No. 229 claims. See Hill-Rom Servs., 755 F.3d at 1372-73. ("In essence, Summit 6 misconstrues Defendants' Further, Defendants, in their Responsive Brief, indicated proposed construction by construing 'further processing' that they are willing to accept the bulk of Plaintiff's to mean 'further modifying.'"). proposed construction. Defs.' Resp. Br. 5, ECF No. 229. Accordingly, the Court now turns to Defendants' Confusion arose between the parties for two reasons. proposed change to one phrase of Plaintiff's First, Defendants' initial construction uses the word construction. "processing" in their definition of "pre-processing," and the construction itself does not define the word 2. "In Preparation For" or "Prior To" "processing." It is only in the briefing that Defendants define "processing." See Defs.' Resp. Br. 4, ECF No. Defendants argue, in the alternative, that the phrase "in 229 ("As Defendants explained in their opening brief, preparation for" should be replaced with the phrase 'further processing' includes 'transmission of the pre- "prior to" in Plaintiff's construction of "pre-processing." processed material,' but may also include other types of Id. As this alternate proposal was introduced in processing, such as uploading, transporting, publishing, Defendants' Response Brief, Plaintiff did not specifically and distributing."). Second, Plaintiff assumed that the address this issue in its briefing. However, in the "pre-" in "pre-processing" indicated that the "processing" hearing on this matter, Plaintiff had the opportunity to step will occur before something else happens, namely clarify its position. See Hr'g [*19] Tr. at 10:8-19, ECF "transmission"; whereas Defendants assumed that the No. 259. According to Plaintiff, the "in preparation" "pre-" in "pre-processing" [*17] indicated that phrase serves to provide helpful context. Id. at 12:5-7. something, namely "modification," would occur before Plaintiff reasons that, because all of the claims require the "processing" step. Plaintiff's attempt to reconcile transmission of pre-processed content, the pre- these two assumptions led it to posit that, under processing must occur for the purpose of preparing Defendants' construction, "processing" is synonymous something for transmission. Id. at 10:9-14; see also Pl.'s with "modification," and thus Defendants' "pre- Open. Br. 9, ECF No. 217 ("The specification makes processing" construction would require two stages of clear that pre-processing does not happen in the modification. See Pl.'s Resp. Br. 6, ECF No. 227. abstract, as Defendants' construction suggests, but Accordingly, Plaintiff's briefing objected that Defendants rather to prepare media for transmission to another were attempting to impose an improper limitation by device."). Alternatively, Plaintiff submitted that it would requiring two stages of modification when the claims are accept a construction that included both "prior to" and agnostic as to whether further modification will take "in preparation for." Hr'g Tr. at 30:6-18, ECF No. 259. place. Id.; Hill-Rom Servs., 755 F.3d at 1372-73 (holding Thus, the Court finds that the parties agree about the that courts "do not read limitations from the "when" question — that the modification of material embodiments in the specification into the claims"). occurs "prior to" the transmission. See id. at 10:2-3 Defendants' briefing clarifies that they did not intend ("[W]e don't dispute that the pre-processing has to their construction to require two stages of modification; happen before transmission."). They disagree as to the instead, their construction of "pre-processing" would "why" question — whether the material is modified for include one stage of modification and one broadly the purpose of transmission. See id. at 10:3-5. defined "processing" stage. See Defs.' Resp. Br. 4, ECF In the previous Summit 6 case, the Court did not No. 229. Page 5 of 28 8 2015 U.S. Dist. LEXIS 179647, *19 specifically analyze the "in preparation for" phrase in its support, "transmission" [*22] is paired along with construction [*20] of "pre-processing." Thus, the Court another function and thus it is not clear why the given will address the question for the first time here. See purpose of the modification must be "transmission." Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11- Moreover, merely because material is modified before CV-390-JRG, 2012 U.S. Dist. LEXIS 176841, 2012 WL transmission does not imply that the purpose of the 6494240, at *5 (E.D. Tex. Dec. 13, 2012) ("[T]he modification is the transmission itself. The Court also previous constructions in those cases [concerning the finds persuasive Defendants' argument that the same patent], and particularly from those in this District, patentee knew how to clarify the purpose by using "in are instructive but are not alone compelling or binding preparation" in some claim terms and not in others. on the Court."). Therefore, in order to avoid reading extraneous limitations into the claims, the Court will use the broader According to Plaintiff, the specification answers the "prior to" language rather than the more narrow "in question of why the material is transported. For support, preparation for" phrase. See Phillips, 415 F.3d at 1320. Plaintiff at the hearing highlighted column 1, lines 7-11 and lines 58-63 of the '557 patent. See Hr'g Tr. at 12:9- Based on the foregoing, the Court concludes that "pre- 15, ECF No. 259. The first excerpt reads in relevant processing" means "modifying the [media object part: "The present invention relates to the handling, data/digital content data/one or more image files, video manipulation and processing of digital content and more files, or audio files], as opposed to data merely particularly to the transportation and Internet publishing associated with the [media object/digital content/image of digital content." '557 patent 1:8-11 (emphasis added). files, video files, audio files], at the client or local device The second excerpt distinguishes prior art because prior to transmission to a remote device." Caught in the Web's ActiveUpload tool had no "built in 'intelligence' to streamline the process of handling and transporting rich media objects from the front end." Id. at B. "Server device," "host server," "remote device," 1:61-63 (emphasis added); see Hr'g Tr. at 12:16-23, "remote server," "a device separate from said client ECF No. 259. Thus, from these two passages, Plaintiff device," and "distributing party" concluded that the "in preparation for transmission" [*21] language is reflected in the Go to table2 specification. Defendants argue that the claim language, specification, Defendants respond that Plaintiff's "in preparation for" and prosecution history demonstrate that the claim language imposes an unnecessary limitation on the terms "server device," "host server," "remote device," claims. Hr'g Tr. at 17:24, ECF No. 259. They argue that "remote server," and "a device separate from said client Plaintiff is attempting to read out other limitations that device"6 are "all one and the same." Defs.' Resp. Br. 7, are present in the claims through a potentially confusing ECF No. 229. According to Defendants, each of these construction. See id. at 27:5-12. For instance, some terms describes a location7 that performs the following claims, such as claim 13(b) of the '482 patent, indicate three functions: (1) providing the pre-processing that the modification takes place for a particular purpose parameters8 to the client device; (2) receiving the pre- other than transmission. See id. at 23:1-8. Claim 13(b) processed digital content from the client device; and (3) of the '482 patent reads in relevant part: ". . . pre- processing parameters controlling said client device in a placement of said digital content into a specified form in 6 Defendants do not list the term "distributing party" in this list. preparation for publication to one or more devices that are remote. . . " '482 patent, claim 13(b) (emphasis See Defs.' Resp. Br. 7, ECF No. 229. However, as added). Defendants add that the specifications' Defendants' proposed construction differs from the "server repeated use of the language "prior to" instead of "in device" term only by substituting "party" instead of "device/server," the Court addresses this term here as well. preparation for" also demonstrates that the applicant knew how to distinguish between terms. Hr'g Tr. at 24:6- 7 According to Defendants, this location is also sometimes 10, ECF No. 259. described in the claims as the "second location" or the "customer's website/server." Defs.' Resp. Br. 11, ECF No. 229. The Court is not convinced that the claims or 8 The parties agree that claim term "pre-processing specifications bear out Plaintiff's context argument. In parameters" means "values directing the pre-processing." Am. both of the specification excerpts Plaintiff cited as Joint Statement [*26] 2, ECF No. 232. Page 6 of 28 8 2015 U.S. Dist. LEXIS 179647, *26 delivering the pre-processed content to the recipient The fact that a patent describes "only a single viewing devices. Id. at 6. embodiment" does not require the invention to be limited to that embodiment. Id. Only when "the [*28] patentee Plaintiff argues that each term has a distinct meaning has demonstrated a clear intention to limit the claim and that Defendants improperly seek to impose a "same scope using 'words or expressions of manifest exclusion server" requirement on the claims, limiting the claims to or restriction,'" will a court read the claims restrictively. the preferred embodiment. Pl.'s Open. Br. 14, ECF No. Id. (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 217. According to Plaintiff, the claims, specification, and F.3d 898, 906 (Fed. Cir. 2004)). For instance, if "the prosecution history allow for different servers or devices preferred embodiment is described in the specification to perform the three functions Defendants list. Id. at 15. as the invention itself," then the claims may be limited to For the "server device," "host server," and "distributing that embodiment. Id. at 1372 (quoting Edwards party" claim terms, Plaintiff argues that there is no Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 construction necessary because persons having (Fed. Cir. 2009)). Courts also have found disclaimers ordinary skill in the art would have readily understood when the specifications describe "required steps," "very the terms. Id. For the "remote device," "remote server," important features," or other such statements that and "a device separate from said client device" claim characterize the invention as a whole rather than merely terms, the parties agree that Plaintiff's proposed describe a particular embodiment of the invention. See constructions should be included within the terms' id. ultimate definitions, at a minimum. The parties disagree as to whether the "same server" requirement also Defendants argue that the patents clearly define the should be included in each of these terms. invention as a web-based tool and therefore the scope of the invention should be limited to internet platforms. Courts generally presume that distinct phrases used in Defs.' Open. Br. 10, ECF No. 219. The '557 and '482 the claims have different meanings. See Chi. Bd. patents are each titled "WEB-BASED MEDIA Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d SUBMISSION TOOL." Defs.' App. Supp. Open. Br. Ex. 1361, 1369 (Fed. Cir. 2012) ("In the absence of any 2 ('557 patent), App. 24, ECF No. 219-1; '482 patent, evidence to the contrary, we must presume that the use App. 37, ECF No. 219-1. The first line of the Abstract of of these different terms in the claims connotes [*27] both patents reads, "The present invention, generally different meanings.") (quoting CAE Screenplates Inc. v. speaking, provides an improved web-based media Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 submission tool." Id. Defendants argue that the (Fed. Cir. 2000)). Thus, Defendants bear the burden of introductory phrase, "the present invention," sets [*29] overcoming this presumption by establishing that the forth a characterization of the invention, thereby creating patentee gave these terms the same meaning. See a limitation. Defs.' Open. Br. 10, ECF No. 21; see also previous Summit 6 case, at *70 ("Looking first to the Hill-Rom Servs., 755 F.3d at 1372. Conversely, Plaintiff claim language, the Court agrees with Plaintiff that the argues that the qualifier "generally speaking" explains terms 'remote device,' 'device separate from said client that the description is merely the preferred embodiment device,' and 'server device' are presumed to have of the invention, rather than the only use of the different meanings because these distinct phrases are invention. Pl.'s Resp. Br. 13, ECF No. 227; see also used differently in the same claims and across the Thorner, 669 F.3d at 1365-66 (holding that any claims of the Patents at issue."). disavowal of claim scope must be clearly set forth). District courts are instructed to "not read limitations from In the hearing, Defendants submitted that the "generally the embodiments in the specification into the claims." speaking" phrase is not a qualifier; instead it is included Hill-Rom Servs., 755 F.3d at 1371; accord Am. to explain that "the present invention" applies to Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324, anything "described as the embodiment within the 1331 (Fed. Cir. 2011) ("It is well settled that the role of a specification." Hr'g Tr. at 86:3-10, ECF No. 259. For district court in construing claims is not to redefine claim example, Defendants compare the sentence to the recitations or to read limitations into the claims to following: "[A] dog, generally speaking, is a mammal." obviate factual questions of infringement and validity but Id. at 95:17. Defendants contend that, in that sentence, rather to give meaning to the limitations actually "generally speaking" serves to explain to the listener contained in the claims, informed by the written that the speaker is giving an overview of what a dog is, description, the prosecution history if in evidence, and rather than saying that dogs only sometimes are any relevant extrinsic evidence."). mammals. See id. at 95:16-97:3. However, the Court Page 7 of 28 8 2015 U.S. Dist. LEXIS 179647, *29 does not find this argument to be persuasive when Defendants respond that every claim Plaintiff applied to the sentence at issue. contends [*32] does not require the performance of the three functions actually does perform all of the three Instead, the Court agrees with Plaintiff that there [*30] functions either explicitly or implicitly. Defs.' Resp. Br. 8, is no clear disclaimer or disavowal of scope that would ECF No. 229. They argue that, essentially, "[a]ll these create a "same server" limitation. See Pl.'s Resp. Br. 11, functions are described in the patents as the functions 14, ECF No. 227; see Liebel-Flarsheim Co., 358 F.3d at of a single web server." Id. (emphasis in original). In 906. Without such disclaiming language, Defendants' support, they contend that the terms "server device," argument reduces to an improper attempt to limit the "host server," and "remote device" are not scope of the claims to the preferred embodiment. distinguishable based upon the function they perform; Likewise, in the previous Summit 6 action, the Court instead, the devices are described as performing found that the invention's description "as a 'web-based different functions throughout the patents' claims. Defs.' media submission tool' is not a 'clear and unmistakable Open. Br. 15, ECF No. 219. They argue that this usage disclaimer' of pre-processing that occurs outside of a demonstrates the interchangeability of the terms. Id. browser." Previous Summit 6 case, at *21; see also Pl.'s Resp. Br. 12, ECF No. 227. The Court reasoned that the To illustrate their argument, Defendants explore the use patents' discussions of pre-processing within a browser of "server device" in the claims. Id. According to or web server referred to the preferred web-site Defendants, in claim 24 of the '515 patent, the term is embodiment only and could not be grafted upon the used to refer to a device that delivers pre-processing claims as a whole. Previous Summit 6 case, at *21, *71 parameters to a client device. Id.; see Defs.' App. Supp. (citing Phillips, 415 F.3d at 1320). The Court adopts the Open. Br. Ex. 4 ('515 patent), App. 68, ECF No. 219-2 same reasoning here. (claim 24: ". . . pre-processing parameters that are received from a server device"). In claims 1, 13, 35-38, Plaintiff further argues that a "same server" limitation and 51 of the '482 patent, it is used to refer to a device would contradict the claims themselves because the that receives pre-processed media objects from [*33] claims describe that different servers may perform some the client device. See '482 patent, App. 49-51, ECF No. or all of the three actions. Pl.'s Open. Br. 15-16, ECF 219-1. In claims 1 and 35-38 of the '482 patent, it refers No. 217. It is not required that the same server or device to a device that delivers the pre-processed media perform all three actions in each instance. [*31] See id. objects to the content recipients. See '482 patent, App. For example, Plaintiff contrasts the use of the "remote 49-51, ECF No. 219-1. The Court concludes that the device" and "server device" in claims 1 and 11 of the fact that the server device sometimes performs different '482 patent. Id. In claim 1, pre-processing parameters functions in different claims does not imply that the are received from a "remote device" and the digital server device must perform all three functions in every content is sent to a "server device." Id. at 15. In claim instance. Therefore, the Court does not find Defendants' 11, the parameters are received from a "remote device" argument persuasive. and the pre-processed media object is sent back to the "remote device." Id. at 16. Thus, Plaintiff concludes, The Court also does not find Defendants' prosecution when the same server is meant to perform both actions, history argument compelling because prior art was the language of the claims was drafted to reflect that distinguished primarilyon the basis of the client-side pre- state, as in claim 11. Id. The use of the same server processing feature, rather than upon usage of the same restriction in some claims and not in others indicates web server. See infra Part III.D.; Defs.' Open. Br. 13, that "the patentees knew how to restrict their claim ECF No. 12-13. coverage" and the choice to use a broader term in some Defendants next argue that, unless their proposed claims should yield broader coverage. Acumed LLC v. constructions are adopted, the terms would be indefinite Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007). and thus invalid. Defs.' Open. Br. 15-16, ECF No. 219. Additionally, Plaintiff contends that most claims do not They contend that "[t]he asserted claims include generic require the step that Defendants put forth as the third terms such as 'device' and 'server' that would, if given a required function, that of display or delivery. Pl.'s Resp. plain meaning interpretation or a construction that is Br. 16, ECF No. 227. For instance, claim 1 of the '482 divorced from the specification and addresses only the patent provides for the possibility of subsequent 'remote' or 'separate' aspect of the term, stretch [*34] publishing, but does not require publishing or the scope of the claims far beyond what the patents distribution. See id.; '482 patent, App. 49, ECF No. 219- disclose." Id. at 15. Summit 6 argues that "device" and 1. Page 8 of 28 8 2015 U.S. Dist. LEXIS 179647, *34 "server" require no construction because they are plain already stored on the [client/local] device." Defs.' Open. and ordinary words that people having ordinary skill in Br. 21, ECF No. 219. They insist that failing to include the art would have readily understood. Pl.'s Open. Br. this description in the phrase improperly broadens the 14-15, ECF No. 217. Defendants do not contest that the claims beyond what the patents disclose. Id. words have plain meaning, but rather argues that the Conversely, Plaintiff argues that Defendants' plain meaning would make the claims impermissibly construction merely adds extraneous and improper broad. The Court finds that the terms "server device," limitations, rather than defining the terms. Pl.'s Resp. Br. "host server," and "distributing party" are not indefinite in 17, ECF No. 227. context, as the terms set forth boundaries that would be reasonably understood by persons skilled in the art. The Although the terms "receiving" and "provided to" do Court further finds that these terms require no have well-understood, common definitions, this fact is construction, as the parties dispute primarily concerns not necessarily dispositive. See O2 Micro Int'l Ltd. v. whether the "same server" limitation should be applied. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). When parties fundamentally dispute At this stage, the Court does not address Defendants' "not the meaning of the words themselves, but the arguments regarding compliance with the written scope that should be encompassed bythis [*39] claim description requirement because such arguments fall language," a court may still be called upon to construct outside the scope of the claim construction issues the term as a matter of law. Id. Thus, the Court now presently before the Court. See Laryngeal Mask Co. v. turns to the parties' arguments regarding the scope of Ambu, 618 F.3d 1367, 1373 (Fed. Cir. 2010); see also the claims. Trading Techs. Int'l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1319 (Fed. Cir. 2013) ("Despite their similarities, Defendants reason that, because the client device however, claim construction and the written description "receives" pre-processing parameters from a separate requirement are separate issues that serve device, those parameters cannot already have been distinct [*35] purposes."). stored on the device. Defs.' Open. Br. 22, ECF No. 219. If the parameters previously were stored on the device, In accordance with the foregoing, the Court concludes they would not have to be received. Id. In other words, that, for the "server device," "host server," and Defendants argue that a conclusion that logically follows "distributing party" claim terms, there is no construction from the claim terms should be added to more clearly necessary. The Court further construes "remote device," define the scope of the claims. See id. At the hearing, "remote server," and "a device separate from said client Defendants explained that the "not already stored" device" according to Plaintiff's proposed constructions. construction is intended to clarify that the parameters cannot have been "loaded onto your computer when the computer was made at the factory or when the software C. Terms Relating to the Receipt, Provision, or was installed on the computer"; instead, the parameters Transmission of Pre-processing Parameters have to have been received during the course of the method. Hr'g Tr. at 36:3-16, ECF No. 259. Go to table3 Plaintiff questions whether Defendants' conclusion Plaintiff argues that the Court should decline to construe logically follows and whether Defendants' construction the "receiving" and "provided to" terms because [*38] would lead to jury confusion. See Pl.'s Resp. Br. 16, these words have an ordinary meaning and the ECF No. [*40] 227. First, Plaintiff highlights claim terms remaining terms in the claims are subject to their own that it argues are counterexamples to Defendants' separate constructions. Pl.'s Open. Br. 23, ECF No. argument. See id. According to Plaintiff, some claims 217; see also previous Summit 6 case, at *94-95 ("[T]he allow a device to receive new pre-processing Court agrees with Plaintiff that these phrases do not parameters, thereby updating or overriding previously require additional construction, since their component received pre-processing parameters. Id. Claims 16 and parts—with the exception of the straightforward terms 18 of the '482 patent, for example, require that the pre- 'receiving,' 'received,' and 'provided to'—have already processing parameters "have been previously been construed."). downloaded" or "have been stored" on the client device. Defendants argue that under the plain meaning of the claim terms, the pre-processing parameters "are not Page 9 of 28 8 2015 U.S. Dist. LEXIS 179647, *40 Id.; see '482 patent, App. 50, ECF No. 219-1.6 Plaintiff before you start performing the method here."). essentially argues that Defendants' construction either Therefore, Defendants conclude that there is no would contradict these claims or it would cause contradiction between Defendants' proposed confusion as to whether such a situation would fall construction and the claims themselves. within the claim scope. See Pl.'s Resp. Br. 16, ECF No. 227. At the hearing, Plaintiff first responds that Defendants attempt to impose an improper limitation regarding the Defendants respond that Plaintiff's purported order of method steps and such a limitation is not counterexamples do not contradict their conclusion. supported by any disavowal in the specification or First, Defendants note that Plaintiff conflates the terms prosecution history. Id. at 42:12-18. According to "stored" and "downloaded." Defs.' Resp. Br. 16-17, ECF Plaintiff, Defendants import a vague temporal limitation No. 229. The Court agrees that claim 16 of the '482 by requiring that the parameters must not have been patent refers only to parameters that have been "already" stored. Plaintiff questions at what exact point "downloaded," rather than parameters that have been in time Defendants mean by "already." [*43] See id. at "stored." Thus, the Court primarilywill analyze the 43:20-44:1. In the preferred web-site embodiment, for relationship between independent claim 13 and example, a user can obtain pre-processing parameters dependent claim 18, rather than dependent claim 16. and then shut down the computer and come back another day with the parameters still stored on the Next, Defendants argue that dependent claims 16 and computer. Id. at 44:2-13. 18 would modify the pre-processing step of independent claim 13 by allowing the additional use of pre- Plaintiff next counters Defendants' claim differentiation processing parameters that already have been argument byhighlighting one "said" that does appear in downloaded or stored in those instances. Defs.' Resp. dependent claim 18. According to Plaintiff, "said pre- Br. 16, ECF No. 229. Thus, Defendants argue that the processing" refers to the pre-processing done in claim "not previously stored" limitation only restricts the scope 13, and it follows that "the pre-processing parameters of independent claim 13, which includes the claim term are already used and have been there because the pre- at issue. Id. Dependant claim 18, for example, allows for processing comprises these pre-processing parameters use of both parameters that have not been stored and in accordance with these already stored parameters." parameters that have been previously stored. Id. In the Hr'g Tr. 42:12-15, ECF No. 259. Thus, Plaintiff implies hearing, Defendants further clarify that the failure to use that this is a typical claim differentiation scenario. "said" or "the" indicates that [*42] the dependent claims refer to a separate set of pre-processing parameters. The Court finds the analysis in Liebel-Flarsheim Hr'g Tr. at 39:17-40:8, ECF No. 259. However, "even if instructive. See Liebel-Flarsheim Co. v. Medrad, Inc., these claims, 16 and 18, refer to the same pre- 358 F.3d 898, 910 (Fed. Cir. 2004); see also Pl.'s Resp. processing parameters, it's still the case that these Br. 16, ECF No. 227. In general, "the presence of a claims don't mean that the pre-processing parameters dependent claim that adds a particular limitation raises a could have been stored on the phone [or other device] presumption that the limitation in question is not found in from the very beginning." Id. at 39:17-21; see also id. at the independent claim." Liebel-Flarsheim, 358 F.3d at 40:9-20 ("[We] are not saying that they can never be 910. This "presumption can be overcome if the downloaded or stored in the client device or in the circumstances suggest a different explanation, or if the phone. We are saying that they can't be pre-stored evidence favoring a different [*44] claim construction is strong." Id. In Liebel-Flarsheim, the court found that the only significant difference between dependent claims 6 Claim and independent claims was that the dependent claims 16 of the '482 patent reads: "The method of claim 13, required the use of a "pressure jacket." The court wherein said pre-processing comprises pre-processing in accordance with one or more pre-processing parameters that concluded that "[t]he juxtaposition of independent claims have been previously downloaded to said client device." '482 lacking anyreference to a pressure jacket with patent, App. 50, ECF No. 219-1 (emphasis added). dependent claims that add a pressure jacket limitation provides strong support for [the plaintiff's] argument that Claim 18 of the '482 patent reads: "The method of claim 13, the independent claims were not intended to require the wherein said pre-processing comprises pre-processing in presence of a pressure jacket." Id. accordance with one or more pre-processing parameters that have been stored in memory of said client device prior to said Here, dependent claim 18 claims the method of identification." [*41] Id. (emphasis added). Page 10 of 28 8 2015 U.S. Dist. LEXIS 179647, *44 independent claim 13 when pre-processing parameters invention such that deletion of the preamble phrase "have been stored in memory of said client device." '482 does not affect the structure or steps of the claimed patent, App. 50, ECF No. 219-1. Thus, parameters invention," the preamble is not a limitation. Id. at 1358- previously having been stored is the only significant 59. difference between the two claims. As in Liebel- Flarsheim, "[i]n such a setting, where the limitation that According to Plaintiff, the preambles are merely general is sought to be 'read into' an independent claim introductions to the claims. Pl.'s Open. Br. 25, ECF No. alreadyappears in a dependent claim, the doctrine of 217. Every substantive term is fully described in the claim differentiation is at its strongest." 358 F.3d at 910. claim body, and there are no essential steps or Thus, Plaintiff has provided a counterexample to structures found only in the preambles. Pl.'s Resp. Br. Defendants' argument. Independent claim 13 does not 18-19, ECF No. 227. Therefore, Plaintiff concludes, "the specify that the parameters were "not already stored on claim body of each claim describes a structurally the [*45] client device." In the absence of strong complete invention." Id. at 19. support to the contrary, Defendants' argument fails. Defendants present [*47] three reasons supporting The Court agrees with Plaintiff that Defendants' addition their argument that the preambles should be construed of the "not already stored" limitation contradicts at least as claim limitations. The Court considers each in turn. one claim and is likely to introduce unnecessary confusion. Accordingly, Plaintiff's constructions of the Defendants first argue that the preambles recite "provided to" and "received from" set of claim terms are essential structure necessary to give meaning to the adopted. claims by providing the antecedent basis for the claimed "said client device" and "said local device." Defs.' Open. Br. 23, ECF No. 219; see Goldenberg v. Cytogen, 373 D. Preambles of the '482 and '515 Patents F.3d 1158, 1164 n.2 (Fed. Cir. 2004) (concluding that claim's reference to antecedent in preamble indicated reliance on preamble to define invention). The term Go to table4 "client device," for example, is first described in the preamble to claim 1 and then referred to in the claim as The parties dispute whether the preambles of the '482 "said client device." '482 patent, claim 1, App. 49, ECF and '515 patents should be interpreted to limit the No. 219-1. However, Plaintiff notes that providing an claims. Defendants argue that the preambles specify antecedent basis does not always indicate reliance on that the claim steps must be executed in "one computer the preamble; there is no such per se rule. Pl.'s Resp. program." Defs.' Open. Br. 22-23, ECF No. 219. Plaintiff Br. 18, ECF No. 227; see Catalina Mktg. Int'l, Inc. v. argues that the Court should follow its reasoning in the Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. previous Summit 6 case to conclude that the preambles 2002) (noting, as one factor to consider, that do not limit the claims to a singular program. Pl.'s Open. "dependence on a particular disputed preamble phrase Br. 24-25, ECF No. 217; previous Summit 6 case, at for antecedent basis may limit claim scope"). Plaintiff *85-93 (concluding that "while the preamble provides an argues that, here, the terms at issue are fully described antecedent basis for subsequent claim terms, it within the claims themselves, making the preambles does [*46] not thereby 'limit[] the claim'" because it duplicative. Pl.'s Resp. Br. 19, ECF No. 227. does not supply any limitations not otherwise present in the claims) (quoting C.R. Bard, Inc. v. M3 Sys., Inc., 157 Defendants next contend that the preambles F.3d 1340, 1350 (Fed. Cir. 1998)). resolve [*48] an unanswered question in the claims. Defs.' Open. Br. 23, ECF No. 219 (citing Griffin v. District courts are instructed that there is no simple test Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002)). to determine when a preamble limits claim scope, and According to Defendants, the preambles clarify that the courts must analyze the issue based upon the facts of device that performs steps a, b, and d in claim 1 of the each case. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 '482 patent is "a client device"; thus, the body does not F.3d 1354, 1358 (Fed. Cir. 2010). In general, preambles set forth the complete invention. Id. do not limit claims. Id. A preamble "may be construed as limiting if it recites essential structure or steps, or if it is In the previous Summit 6 case, the Court found that the necessary to give life, meaning, and vitality to the preambles do not resolve this question or provide any claim." Id. (internal quotation marks omitted). However, more clarity than the claim terms themselves. Previous "when the claim body describes a structurally complete Page 11 of 28 8 2015 U.S. Dist. LEXIS 179647, *48 Summit 6 case, at *91-92 ("Because the preamble adds submit and transport media objects over the web to nothing to the reader's understanding of the 'receiving' be stored and served. Using the Prepare and Post and 'transmitting' steps, the alleged deficiencies in these tools, end users can submit images in an claim steps cannot be used to justify treating the immediate, intuitive manner. No technical preamble as limiting the claim."); see also Pl.'s Resp. Br. sophistication is required. In particular, 19, ECF No. 227. Claim 1's preamble reads: "A understanding technical terms such as JPEG, computer implemented method of pre-processing digital resolution, pixel, kilobyte, transfer protocol, IP content in a client device for subsequent electronic address, FTP etc., is not required, since the publishing, comprising[.]" '482 patent, claim 1, App. 49, Prepare and Post tools handles all of these tasks ECF No. 219-1. Defendants contend that this preamble for the user. makes it clear that each step of the method takes place in the client device, rather than merely the pre- '482 patent 2:52-61, App. 45, ECF No. 219-1 (emphasis processing step. Defs.' Open. Br. 23, ECF No. 219. added); see also Pl.'s Resp. Br. 21, ECF No. 227 However, as the Court previously found, the preamble's (noting the plural description of the "Prepare and Post text is silent [*49] as to the location of the "receiving" tools"). The preferred embodiment is described here as and "transmitting" steps. See Pl.'s Resp. Br. 19, ECF using multiple browser-side components to accomplish No. 227. It only addresses where the "pre-processing" tasks, such as [*51] submitting and transporting step takes place, which is also described in the claim images. See id. The description does not imply that only step c. '482 patent, claim 1, App. 49, ECF No. 219-1. one computer program is used. Thus, the preamble does not add any more information According to Defendants, the patent distinguishes prior to the information in the claim's body. art on the basis of the instant invention's use of only one Finally, Defendants contend that the requirement that computer program. The patent describes itself as an the client-side steps must be undertaken on "one improvement over prior art on the basis that the FTP computer program" is necessary as it distinguishes the and ActiveUpload prior art were "piecemeal solutions" claimed invention from prior art. Defs.' Open. Br. 23, and lacking "built in 'intelligence.'" Defs.' Open. Br. 24, ECF No. 219. The preambles do not specifically state ECF No. 219; see '482 patent, at 1:25-34, 1:50-67, App. that the invention must operate on "one computer 45, ECF No. 219-1. From such statements, Defendants program." See, e.g., '482 patent, claim 1, App. 49, ECF infer that the solution the invention provided was a No. 219-1. Instead, Defendants argue that "the asserted central, singular computer program. patents describe the claimed 'computer implemented The Court finds that the full context for Defendants' method' as 'an improved web-based media submission quotations above illustrates on what basis the FTP and tool' that allows the alleged invention to 'handle[] all of ActiveUpload prior art were distinguished. First, the the[] tasks for the user.'" Id. at 24 (emphasis in original) specification portrays the disadvantages of other (citations to '482 patent, claim 1, App. 49, ECF No. 219- "piecemeal solutions" for uploading images, such as 1; '482 patent, 2:3-4, 60, App. 45, ECF No. 219-1 using an FTP program, as follows: omitted). For example, transferring a digital image may The Court notes that Defendants have pulled these require first downloading a FTP program, then quotes from various contexts in the '482 patent. The installing it, then running it and connecting to an term "computer implemented method" comes from FTP server by typing the server name in the the [*50] preamble to claim 1. '482 patent claim 1, App. connection dialog, then navigating to the proper 49, ECF No. 219-1. The next quote is a generalized subdirectory, selecting the files [*52] to be description of the invention found in the Summary of the uploaded, making sure that the program is in binary Invention, which reads: "The present invention, transfer mode, then sending the files. generally speaking, provides an improved web-based media submission tool." '482 patent 2:3-4, App. 45, ECF '482 patent, 1:27-33, App. 45, ECF No. 219-1. Thus, the No. 219-1. The third quote comes from the Detailed instant invention is distinguished from an FTP program Description of the Preferred Embodiments, which reads on the basis of simplicity because it requires less steps in part: for the user. Moreover, as Plaintiff notes, the FTP program is a singular program. See Pl.'s Resp. Br. 27, The Prepare and Post tools refers to browser-side ECF No. 227. Next, ActiveUpload is distinguished, not components which together provide the ability to on the basis of simplicity, but on the basis of user-side Page 12 of 28 8 2015 U.S. Dist. LEXIS 179647, *52 pre-processing as follows: construction is necessary. Pl.'s Open. Br. 26, ECF No. 217. At the hearing, Plaintiff stated that "sharing" would Although Caught in the Web's ActiveUpload tool be an acceptable construction of the "distributing" term simplifies the user experience, it does little toward were the Court to decide that a construction is furthering 'backend' automation in the handling and necessary. Hr'g Tr. at 49:2-10, 52:1-5, ECF No. 259. distribution of media objects and has no built in Defendants argue that the terms should be interpreted 'intelligence' to streamline the process of handling to mean "making publicly available / the act of making and transporting rich media objects from the front publicly available." Defs.' Open. Br. 24-25, ECF No. end. 219. The parties have stipulated that "making publicly '482 patent, 1:62-67, App. 45, ECF No. 219-1 (emphasis available / the act of making publicly available" is the added). Thus, neither prior art is distinguished on the definition of the "publishing / publication" claim term. basis of the number of programs used. See Am. Joint Statement 2, ECF No. 232. Thus, the issue is whether "distributing" has the same meaning as According to Plaintiff, Defendants' limitation requiring "publishing." "one computer program" also does not follow from the language of the claims themselves. Pl.'s Open. Br. 25, "When different words or phrases are used in separate ECF No. 217. The preamble indicates that the method is claims, a difference in meaning is presumed." Nystrom "computer implemented," which does [*53] not imply v. Trex Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005). that all client-side steps must be performed on only one However, "[d]ifferent terms or phrases [*55] in separate computer program. Id. Moreover, Plaintiff argues that a claims may be construed to cover the same subject requirement of "one computer program" would matter where the written description and prosecution contradict the operation of the preferred website history indicate that such a reading of the terms or embodiment. Id. at 26. In the preferred embodiment, phrases is proper." Id. activity takes place in a browser and also in a plug-in program, such as an Active X control or Java applet. Id. Defendants argue that the two terms, publication and Defendants respond that these plug-ins are described distribution, are used interchangeably in the patents. as objects within one program, operating within the web Defs.' Open. Br. 24-25, ECF No. 219. In support, they browser in the preferred embodiment. Defs.' Resp. Br. argue that the specification describes the publishing of 19, ECF No. 229. Thus, Defendants argue that the one- digital content and then never uses the word publishing program requirement holds. See id. again in the specification; instead, the word distribution is used. Id. at 24 (citing '482 patent 1:11-14, 1:40-45, The Court finds that the patent specification, claims, and 1:62-65, App. 45, ECF No. 219-1). In their Response preferred embodiment do not support a "one computer Brief, Defendants add that the terms are also used program" limitation. The Court further finds that interchangeably in claims 1 and 38 and in claims 9 and Defendants have not presented any compelling 34 of the '482 patent. Defs.' Resp. Br. 20, ECF No. 229 argument to overcome the general presumption that the ('482 patent, claims 1, 9, 34, 38, App. 49-50, ECF No. preambles are merely general introductions. Even if the 219-1).5 Relying on Nystrom, 424 F.3d at 1143, and preferred embodiment used only one program, that reason alone would not be enough to graft a limitation onto the claims as a whole. See Phillips, 415 F.3d at 5 Claim 9 reads: "The method of claim 1, wherein said 1320. Further, because the preambles do not add any material information to the claim body, they do not serve previously received pre-processing parameters enable said as claim limitations. [*54] Accordingly, the Court client device to place said identified group of one or more items of digital content into a specified form in [*56] concludes that the preambles are not subject to preparation for publication to one or more devices on which construction. said identified group of one or more items of digital content is to be electronically displayed." '482 patent, claim 9, App. 49, ECF No. 219-1 (emphasis added). E. "Distributing/distribution" Claim 34 reads: "The method of claim 26, wherein said pre- Go to table5 processing parameters enable said client device to place said digital content into a specified form in preparation for Plaintiff argues that the "distributing / distribution" term distribution to one or more devices on which said digital should be given its ordinary meaning and no content is to be electronically displayed." Id. at claim 34, App. 50 (emphasis added). Page 13 of 28 8 2015 U.S. Dist. LEXIS 179647, *56 Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 The Court next turns to a new argument presented at F.3d 958, 968 (Fed. Cir. 2000), Defendants conclude the hearing. According to Plaintiff, Defendants HTC and that the terms should have an identical construction Motorola's inter partes re-examination application because they are used interchangeably to cover the concedes that the meaning of distribution is broader same subject matter. than the meaning of publication. Hr'g Tr. at 51:1-12, ECF No. 259. According to Plaintiff, a portion of the Plaintiff counters that both the Nystrom and Tate courts application reads: evaluated terms used in different claims, and here the One of skill in the art would understand distribution distribution and publication terms are sometimes used in to be the transmission of information from one the same claim. Pl.'s Resp. Br. 22, ECF No. 227. The device to another. Publication is a particular kind of proposition from Nystrom quoted by Defendants reads distribution in which information is made available in part "[d]ifferent terms or phrases in separate claims to the public rather than a specific recipient. One of may be construed to cover the same subject matter." skill in art would understand that "distribution" is a Defs.' Open. Br. 24, ECF No. 219 (quoting Nystrom, 424 broad term which encompasses multiple means of F.3d at 1143) (emphasis added). Plaintiff notes that, in making content available in digital form, including the instant action, claims 36, 38, and 51 of the '482 publication. patent include both the publication and distribution ... terms. '482 patent, claims 36, 38, 51, App. 51, ECF No. 219-1; Pl.'s Resp. Br. 22, ECF No. 227. In light of the specification, one of skill in the art would consequently understand publishing, In the previous Summit 6 case, [*57] the Court also publication, distributing, and distribution to be at analyzed the distinction between the "publication" and least as broad as making available to at least one "distribution" terms. The Court concluded that person [*59] other than the user. "[b]ecause the '482 Patent uses the separate terms 'publication' and 'distribution' throughout the claims, and Id. at 51:5-12. Defendants respond that the re- uses both terms in claim 38, the Court presumes that examination process in the Patent Office applies these terms have different meaning and scope." different legal standards, and thus the arguments made Previous Summit 6 case, at *82 (citing Am. Piledriving in that context do not always carry over into the claim Equip., 637 F.3d at 1336). Concluding that publication construction context. Id. at 54:20-23. The Patent Office meant "sharing with the public," the Court also noted also applies the broadest reasonable interpretation of that the concept of "sharing" in general is "more the claim terms. Id. at 54:23-55:3. The Court declines to consistent with the claim term 'distribution,' which is find that these statements are a concession of proper used in place of 'publication' in certain claims," such as construction in the claim construction context, however, claims 26 and 38 of the '482 patent. Id.; see also Hr'g they support Plaintiff's argument that "distribution" could Tr. at 49:2-10, 52:1-5, ECF No. 259 (noting Plaintiff's be read broadly, consistent with Plaintiff's construction. agreement that sharing would be an appropriate construction of the term). Finally, Defendants contest Plaintiff's assertion that no construction is required for the distribution term. The Accordingly, this Court presumes that the two terms Court agrees that the parties have raised a genuine have different meanings because of their use in the dispute about a claim term that implicates the scope of same claims and in different claims. See Comark the claims, and thus, construction would be appropriate. Commc'ns v. Harris Corp., 156 F.3d 1182, 1187 (Fed. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, Cir. 1998). Moreover, Defendants have not presented 1568 (Fed. Cir. 1997) ("Claim construction is a matter of any evidence, besides their use in similar claims and the resolution of disputed meanings and technical scope, to introduction's use of the word publication, that the terms clarify and when necessary to explain what the patentee are defined to cover the same subject matter. covered by the claims, for use in the determination of Additionally, unlike some other cases in which terms infringement."). were found to be interchangeable, [*58] the words themselves do not have overlapping content. See, e.g., For the foregoing reasons, the Court adopts its Nystrom, 424 F.3d at 1143-44 (overlap between "board" reasoning in the previous [*60] Summit 6 case, and and a "wood decking board"). Without more, the Court determines that "publication" is a subset of "distribution." concludes that the presumption that the terms have See previous Summit 6 case, at *82. The Court finds that "distributing" means "sharing," and "distribution" different meanings holds. Page 14 of 28 8 2015 U.S. Dist. LEXIS 179647, *60 means "the act of sharing." The parties agree that, in claim 13 of the '482 patent, step c's "identification [*62] of a user" can occur either before or after step b's pre-processing step. See Hr'g Tr. F. "Said identification" at 114:21-115:2, ECF No. 259. From this premise, the parties draw different conclusions about whether the Go to table6 "said identification" could refer to step c's "identification of a user." The parties dispute whether the term "said identification" in claims 17 and 18 of the '482 patent is indefinite. Plaintiff contends that it is reasonably certain to those Plaintiff contends that this phrase, used in dependent skilled in the art that "said identification" refers to "said claims 17 and 18, refers to independent claim 13's "said identification of digital content" in light of surrounding identification of digital content." Pl.'s Open. Br. 29-30, claim language. See Pl.'s Open. Br. 29-30, ECF No. ECF No. 217. Defendants argue that the term is 217. According to Plaintiff, dependent claims 17 and 18 indefinite for lack of a properly identified antecedent of the '482 patent add a timing aspect to independent basis because the term could refer to claim 13's claim 13 of the '482 patent. Pl.'s Open. Br. 29, ECF No. "identification of digital content" or "identification of 217. Plaintiff specifies that the pre-processing user." Defs.' Open. Br. 25, ECF No. 219. parameters must be downloaded and stored before the pre-processing occurs. Pl.'s Open. Br. 29 & n.11, ECF According to Plaintiff, even if there could be two No. 217. The identification of digital content in step a possible interpretations, the correct interpretation is must also occur before the pre-processing occurs, as "reasonably ascertainable." Pl.'s Resp. Br. 24-25, ECF such content comprises what is pre-processed. Hr'g Tr. No. 227. However, it is unclear whether the "reasonably at 114:13-16, ECF No. 259. Therefore, Plaintiff ascertainable" standard survives post-Nautilus. In concludes that the claim language in claim 17 and 18 Nautilus, the Supreme Court disapproved of the must refer to the "identification digital content" in claim "insolubly [*61] ambiguous" and "not amenable to 13(a) because that is the only identification that must construction" standards of definiteness. 134 S. Ct. at take place before the [*63] pre-processing. Id. at 2130. Considering "ascertainability" to be similar to 114:17-20. A dependent claim referring to an "amenibility to construction," the Court instead will apply identification that must occur before pre-processing Nautilus' "reasonable certainty" standard to the analysis cannot refer to a step that could occur after the pre- of whether a claim term's antecedent basis is sufficiently processing. Id. at 116:1-3. definite. See id. Defendants respond that because information "[A] patent is invalid for indefiniteness if its claims, read identifying either the user or the digital content could be in light of the specification delineating the patent, and downloaded and stored before pre-processing occurs, the prosecution history, fail to inform, with reasonable the claim term "said identification" remains ambiguous. certainty, those skilled in the art about the scope of the Defs.' Resp. Br. 22, ECF No. 229; see also Defs.' App. invention." Id. at 2124. "The definiteness requirement, Supp. Reply Ex. 2 (Jones Dep.) 38:23-39:5, 40:15-20, so understood, mandates clarity, while recognizing that App. 24-26, ECF No. 234-1; Defs.' App. Supp. Reply Ex. absolute precision is unattainable." Id. at 2129 (internal 3 (Jones Exs.), App. 58-64, ECF No. 234-1. The quotation marks omitted). Therefore, "there is an dependent claim may refer to either one. See id. Thus, indefiniteness problem if the claim language might mean Defendants conclude, the context does not make the several different things and no informed and confident antecedent basis reasonably clear. choice is available among the contending definitions." Plaintiff next argues in its opening brief that the parties' Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, experts in the previous Summit 6 case as well as the 1371 (Fed. Cir. 2014) (quoting Nautilus, 134 S. Ct. at U.S. Patent Office Examiner "were able to discern the 2130 n.8) (internal quotation marks omitted). meaning of the term without issue." Pl.'s Open. Br. 30, Defendants bear the burden of establishing ECF No. 217. However, Plaintiff has failed to cite to any indefiniteness by clear and convincing evidence. See record evidence to support this allegation. See id.; Defs.' Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d Resp. Br. 22, ECF No. 229. 1365, 2015 WL 859503, at *3 (Fed. Cir. 2015). Applying this standard, the Court now turns to the parties' Plaintiff next relies upon its expert Dr. Mark T. Jones arguments. ("Jones"), who [*64] concluded that a person having Page 15 of 28 8 2015 U.S. Dist. LEXIS 179647, *64 ordinary skill in the art would be able to understand the convincing evidence that no "informed and confident scope of the term with reasonable certainty. Pl.'s Resp. choice is available among the contending definitions" to Br. 25-26, ECF No. 227; Pl.'s App. Supp. Resp. Br. Ex. those of ordinary skill in the art. Interval Licensing, 766 1 (Jones Decl.), App. 259, ¶¶ 26-32, ECF No. 228. F.3d at 1371; Nautilus, 134 S. Ct. at 2130. Perfection in Plaintiff clarifies Jones' argument further in the Sur- drafting is not required. See id. Here, the Court finds Reply Brief. Pl.'s Sur-Reply Br. 2, ECF No. 235. Jones' testimony regarding this term to be credible, and According to Jones, the meaning of "said identification" any doubts as to the proper antecedent raised by is clear because there is in fact only one claimed Defendants are not sufficiently convincing to carry their "identification" in claim 13 — the identification of digital burden. content. Id. Jones argues that there is no "identification of user" step, contrary to Defendants' arguments. Id. Accordingly, The Court determines that the "said Instead, claim 13 merely provides for "retrieving identification" term in claims 17-18 means "said information that enables identification of the user." Id.; identification of digital content." Pl.'s App. Supp. Sur-Reply Ex. 1 (Jones Dep.) 40:6-13, App. 4, ECF No. 235. Thus, there is only one claimed identification. See id. at 51:8-9, App. 6 ("Step C doesn't G. "Said client device" require an identification."); Jones Decl. ¶ 31, App. 261- 62, ECF No. 228. Go to table7 Defendants contend, contrary to Jones' testimony, that Defendants argue that "said client device" in claim 25 of the "identification of content" and the "identification of the '482 patent is indefinite. Defs.' Resp. Br. 23, ECF the user" are two separate steps that occur, even if the No. 229. Plaintiff argues that there was a typographical "identification of the user" step is not specifically [*65] error, and the phrase should read "said local device." claimed. Defs.' Reply Br. 1 & n.1, ECF No. 234. Claim Pl.'s Open. Br. 30-31, ECF No. 217. Plaintiff argues that 13's "retrieving information that enables identification of the claim should not be stricken for indefiniteness and the user" implies that the "identification of the user" is a requests that the Court judicially correct this error. Pl.'s method step. See id. Thus, claims 17 or 18's "said Resp. Br. 26, [*67] ECF No. 227. identification" could refer either to this implied step or to the specifically claimed identification of content step. In both parties' Replybriefs, the parties disagree about See id. Defendants further note that "when the patentee the appropriate legal standard to apply when addressing wanted to reference the first 'identification' (of digital alleged typographical errors. Defendants argue that a content)—as it did in claim 13 step c—the patentee district court may only correct an error in a patent if the referenced it as 'said received identification.'" Defs.' error is evident "from the face of the patent." Defs.' Reply Br. 1, ECF No. 234. Because claims 17 and 18, Reply 1, ECF No. 234 (citing H-WTech., L.C. v. do not refer to the first identification of digital content in Overstock.com, Inc., 758 F.3d 1329, 1333 (Fed. Cir. a consistent way, Defendants conclude that the term is 2014); Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d ambiguous. Id. 1297, 1303 (Fed. Cir. 2005)). Defendants argue that a court may not consult the prosecution historyto Finally, Plaintiff notes that Defendants have failed to determine whether an error maybe corrected. Plaintiff present expert testimony on this issue. Defendants, at counters that consulting the prosecution history along the hearing, responded that there is no expert testimony with the patent is required. Pl.'s Sur-Reply Br. 2, ECF required here, relying upon the Smartflash and Guzik No. 235 (citing Grp. One, Ltd., 407 F.3d at 1303). antecedent basis cases. Hr'g Tr. at 100:5-101:8, ECF Plaintiff alternatively suggests that it would be No. 259; see Smartflash LLC v. Apple Inc., 77 F. Supp. appropriate to correct an error whenever it is evident on 3d 535, 2014 WL 6873161 (E.D. Tex. 2014); Guzik the face of the patent that there is an error, even if the Technical Enters., Inc. V. W. Digital Corp., No. 11-cv- proper correction is not evident. Hr'g Tr. at 139:25- 03786-PSG, 2013 U.S. Dist. LEXIS 101538, 2013 WL 140:25, ECF No. 259 (relying on Fargo Elecs., Inc. v. 3934892 (N.D. Cal. July 19, 2013). The Court agrees Iris, Ltd., Inc., 287 F. App'x 96, 101 (Fed. Cir. 2008)). with Defendants that the lack [*66] of expert testimony presented by one party is not necessarily dispositive of District courts are instructed that they may judicially the issue before the Court. correct a patent only when "(1) the correction is not subject to reasonable debate based on consideration of The burden rests on Defendants to prove by clear and the claim language and the specification and (2) the Page 16 of 28 8 2015 U.S. Dist. LEXIS 179647, *67 prosecution historydoes not suggest a different inappropriate, and "said client device" in claim 25 of the interpretation of the claims." Ultimax Cement Mfg. Corp. '482 patent is indefinite. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009) (quoting Novo Indus., LP v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)). H. "Media object identifier" "[A]lthough courts cannot 'rewrite claims to correct material errors,' [*68] . . . if the correction is not subject Go to table8 to reasonable debate to one of ordinary skill in the art, namely, through claim language and the specification, The parties dispute the definiteness and meaning of the and the prosecution history does not suggest a different "media object identifier" claim term. Plaintiff argues that interpretation, then a court can correct an obvious there is no construction necessary for the term because typographical error." Id. According to the Federal Circuit, it has a reasonablycertain meaning that is "evidence of error in the prosecution history alone [is] sufficiently [*70] defined in the claims. Pl.'s Resp. Br. insufficient to allow the district court to correct the error"; 27, ECF No. 227. Defendants contend that the patent the error must be evident on the face of the patent. H-W does not define what a media object identifier is, only Tech., 758 F.3d at 1334. A district court does not have what it does — which is impermissible "functional authority to correct the patent when "one cannot discern claiming" of a structural element.6 Defs.' Open. Br. 32- what language is missing simply by reading the patent." 34, ECF No. 219. Plaintiff disputes Defendants' Id. Thus, merely detecting the presence of an error is assertion that functional claiming is prohibited. Pl.'s not sufficient if someone skilled in the art is not able to Resp. Br. 27, ECF No. 227. The Court first turns to a discern which language is missing. preliminary challenge to Defendants' expert and then discusses the relevant legal standards. The Court concludes here that the error is not evident 1. Daubert Challenge from the face of the patent alone and correction would substantially impact the understanding of the claim by At the hearing, Plaintiff submitted that Defendants' substituting one defined term for another. See Atlas IP, expert Dr. Emery Berger's ("Berger") testimony is LLC v. St. Jude Med., Inc., No. 14-21006-CIV, 2014 deficient under Daubert, and thus, Defendants have not U.S. Dist. LEXIS 104109, 2014 WL 3764129, at *13 put forth sufficient evidence to carry their burden of (S.D. Fla. July 30, 2014) (refusing to correct "received showing indefiniteness. Hr'g Tr. at 185:13-18, ECF No. by the hub" to "received by the remotes" because the 259. In support, Plaintiff explains that Berger did not change "substantially impacts the understanding of the read the relevant Nautilus opinion before giving his claim"). [*69] The error also is not apparent from the expert opinion about indefiniteness. Id. at 183:14-21. face of the patent, unlike a grammatical or mathematical The Court finds that the experts in this case were called error, for instance. See Rembrandt Data Techs., LP v. upon to present their opinions about what a person of AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) skill in the [*71] art would have interpreted the claims to (distinguishing Ultimax Cement Mfg. Corp. v. CTS mean at the relevant time and considering the relevant Cement Mfg. Corp., 587 F.3d 1339 (Fed. Cir. 2009), evidence. The experts were not called upon to present "because in that case, the court merely added a comma legal opinions. Moreover, even if Berger's testimony that to a chemical formula because the plaintiff a term is indefinite were a conclusion based upon the demonstrated that the claimed formula C9 S3 S3 Ca(f cl)2 prior legal standard, that would not defeat the corresponds to no known mineral") (internal quotation usefulness of the testimony. If a term is not "reasonably marks omitted). Thus, judicial correction of the patent ascertainable," or capable of being construed under the here is not appropriate. Moreover, "[e]ven assuming this prior legal standard, then it also would not be change would save the term from indefiniteness, the "reasonably certain" under Nautilus' more strict reading. Court cannot grant a change merely to sustain its validity." See Atlas IP, 2014 U.S. Dist. LEXIS 104109, Next, Plaintiff argues that Berger's failure to review all of 2014 WL 3764129, at *13; accord Rembrandt Data, 641 the prosecution historyundermines the validity of his F.3d at 1339 (The Federal Circuit "repeatedly and expert opinions. Hr'g Tr. at 184:15-185:18, ECF No. consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity."). 6 Theparties agree that a media object identifier is not a means-plus-function term. See Hr'g Tr. at 172:1-11, ECF No. Thus, the Court concludes that judicial correction is 259. Page 17 of 28 8 2015 U.S. Dist. LEXIS 179647, *71 259. Defendants respond that Berger reviewed every indication of the scope of subject matter embraced by portion of the prosecution history that was cited by the claim" to a person of ordinary skill in the art. either party. Id. at 198:9-21. Accordingly, the Court finds Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d that the testimony is based upon sufficient facts or data, 1244, 1255 (Fed. Cir. 2008); accord Interval Licensing withstanding a Daubert challenge. See Fed. R. Evid. LLC, 766 F.3d at 1374. After Nautilus, the scope of a 702(b). Therefore, the objection to Berger's testimony is claim must be able to be defined with reasonable overruled. certainty in order to escape an indefiniteness fate under 35 U.S.C. § 112, ¶ 2. Interval Licensing, 766 F.3d at 2. Media Object Identifier Analysis 1369-70. The Court now must determine whether Defendants have met their burden to show by clear and "[D]istrict courts are not (and should not be) required to convincing evidence that the claim is indefinite. See construe every limitation present in a patent's asserted Warsaw Orthopedic, 778 F.3d 1365, 2015 WL 859503, claims." O2 Micro Int'l Ltd., 521 F.3d at 1362. For at *3. example, when a term [*72] is a common term with a commonly understood meaning, construction may not The parties agree that "media object identifier" is an be required. Id. at 1360. However, "[w]hen the parties element without a standard definition within the present a fundamental dispute regarding the scope of a computer programming art. See Defs.' Reply Br. 1, ECF claim term, it is the court's duty to resolve it." Id. at 1362. No. 234. Plaintiff's expert Jones indicated that, to his "A determination that a claim term 'needs no knowledge, "media object identifier" is not a term of art construction' or has the 'plain and ordinary meaning' within any computer [*74] programming language. See may be inadequate when a term has more than one Jones Dep. 83:20-84:15, 85:14-24, App. 37-39, ECF 'ordinary' meaning or when reliance on a term's No. 234-1. Plaintiff contends that the term's meaning 'ordinary' meaning does not resolve the parties' dispute." derives from the specifications in the patents Id. at 1361. themselves. See id. Thus, the parties are in agreement that the meaning, if any, must derive from the patents' According to Plaintiff, because the "media object claims, in light of the specification and prosecution identifier" term has a reasonably certain meaning to a history. person of ordinary skill in the relevant art in light of the claims and prosecution history, no construction is The crux of Defendants' argument is that the structure of required. Pl.'s Open. Br. 34, ECF No. 217. However, the the "media object identifier" apparatus is undefined. fact that a given term has a clear meaning merely According to Defendants, the term "covers any and all means that the term is not indefinite. Every claim for software that is capable of providing an 'interface for which a construction is given must meet this minimum acquiring and pre-processing a media object'—no standard of definiteness. Interval Licensing, 766 F.3d at matter how the software performs these functions." 1369-70. When there is a genuine dispute about the Defs.' Resp. Br. 24, ECF No. 229 (quoting Pl.'s Open. meaning of a material claim term, such as in the instant Br. 33, ECF No. 217). A media object identifier is an situation, the Court must resolve the dispute. See O2 apparatus because it is described as a "thing," rather Micro Int'l Ltd., 521 F.3d at 1362. In order to resolve the than a method, step or process.7 Hr'g Tr. at 167:18-20, dispute here, the Court finds that it must determine the ECF No. 259. Defendants conclude that the purely proper construction of the "media [*73] object identifier" functional description of the media object identifier is claim term, if the "media object identifier" claim term is impermissibly indefinite. Id. at 169:23-170:21 (relying on not indefinite. O'Reilly v. Morse, 56 U.S. 62, 14 L. Ed. 601 (1854); Defendants' conclusion that the term is indefinite is Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. based upon their argument that functional claiming is prohibited. Defs.' Open. Br. 32, ECF No. 219. However, 7 Plaintiff argues that Defendants have not demonstrated that as the Federal Circuit has explained, defining a the media object identifier is an apparatus, rather than a particular claim term by its function is not necessarily method in which specific [*75] steps are described. See Pl.'s improper. Hill-Rom Servs., 755 F.3d at 1374-75; Resp. Br. 30, ECF No. 227. As a preliminary matter, the Court Microprocessor Enhancement Corp. v. Tex. Instruments determines that the "media object identifier" is described in the Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). A claim term claims and by the parties as something that performs a defined using functional language may be indefinite if function, rather than a method. See, e.g., Pl.'s Resp. Br. 8, the functional language fails "to provide a clear-cut ECF No. 227 ("[A] 'media object identifier' is something used to acquire and pre-process media objects."). Page 18 of 28 8 2015 U.S. Dist. LEXIS 179647, *75 1, 67 S. Ct. 6, 91 L. Ed. 3, 1946 Dec. Comm'r Pat. 628 based upon Jones' deposition. Id. Plaintiff advocates for (1946)). such a construction if the Court determines that construing the term is necessary. Id. Defendants continue that the media object identifier does not fit within the only exception to the prohibition Defendants contend that Jones' testimonygives on functional claiming — means-plus-function claiming "onlyshifting, functional descriptions," such as "providing under 35 U.S.C. § 112(6). A means-plus-function a graphical user interface" and "pre-processing," instead element may be described using functional language in of describing what a "media object identifier" is. Defs.' the claims provided that the specification yields Reply 2, ECF No. 234; see also Jones Dep. 86:23- sufficient structure to define the term. See Noah Sys., 87:03, 87:17-23, App. 40-41, ECF No. 234-1. From Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). these definitions, Defendants conclude that "Summit 6 Defendants argue that because this is not a means-plus seeks to cover any structure that performs the disclosed function element, Plaintiff cannot look to the functions, to the extent those functions can even be specification for support, even were there any support in identified." Defs.' Reply 2, ECF No. 234 (emphasis in the specification. Hr'g Tr. at 168:1-18, ECF No. 259. original). Theycontend that there is no structure given in either the claims or the specification, and therefore the term is The Court finds that because the parties are in indefinite. Id. at 167:24-168:3. agreement that the term [*78] does not invoke means- plus-function claiming, Plaintiff is not required to Plaintiff relies on Jones' testimony to argue that the term establish structure. Cf. Noah Sys., 675 F.3d at 1312. is not indefinite. Plaintiff argues that the claims [*76] Rather, Defendants bear the burden of establishing by clearly define the "media object identifier" term as clear and convincing evidence that the term is indefinite. software that encompasses a graphical user interface See Warsaw Orthopedic, 778 F.3d 1365, 2015 WL and performs several functions, including pre- 859503, at *3. Accordingly, the "media object identifier" processing media objects. See Pl.'s Resp. Br. 8, ECF term will survives definiteness review if Plaintiff No. 227 ("[A] 'media object identifier' is something used demonstrates that the term is defined such that the to acquire and pre-process media objects."); Jones Dep. claims containing the term have a reasonably clear 85:21-23, 86:5-13, 87:13-23, App. 9-10, ECF No. 235. meaning to one of skill in the art in light of the claims According to Jones' Declaration, "[o]ne of ordinary skill and prosecution history. in the art can look to the asserted claims of the '557 patent to ascertain with reasonable certainty the Here, Plaintiff has demonstrated that the primary meaning of media object identifier; in fact, one of functions and uses of the media object identifier are ordinary skill would observe that the asserted claims clear, thus giving the term boundaries. Plaintiff provides include limitations that describe the media object that "the intrinsic record describes an 'interface' and identifier, including dependent claims that further recites the pseudo-code (and a related textual describe it." Jones Decl. ¶ 46, App. 264, ECF No. 228. description) of the media object identifier." Pl.'s Resp. He explains, for instance, that "[b]ecause independent Br. 33-34, ECF No. 227. Plaintiff relies upon High Point claims 1, 15, 28, and 37 specify 'pre-processing the Sarl, for the proposition that an "interface" is "a sufficient media object by the media object identifier', they recitation of structure."8 Id.; High Point Sarl v. Sprint necessarily require that the media object identifier be Nextel Corp., No. 09-02269-CM, 2012 U.S. Dist. LEXIS capable of pre-processing media objects." Id. at ¶ 46, 108485, at *15 (D. Kan. Aug. 3, 2012) (finding App. 265. In response to Defendants' allegations of "interface" to have "a well-known meaning to those of indefinite structure, Jones asserts, "[s]hort of giving skill in the art"). Such a definition clarifies one aspect of source code, I don't think -- I can't imagine giving the media object identifier. See Jones Dep. 86:5-13, much [*77] more structure than this." Id. at 126:12-14. 87:13-23, App. 10, ECF No. 235. The prosecution [*79] history reflects that the media object identifier is not At the hearing, Plaintiff argued that the plain meaning of merely a "media container" or "image well," which is a "media object identifier" to one skilled in the art based general term for the space on the screen into which the upon the patent is "software that includes a graphical user interface for acquiring media objects, such as a photo, video, or audio files, and pre-processing them in 8 Inthe briefing, Plaintiff offered this argument in a different preparation for transmission elsewhere." Hr'g Tr. at 187:23-11, ECF No. 259. Plaintiff adopts this definition context to demonstrate that 35 U.S.C. § 112, ¶ 6 does not apply because there are sufficient structures disclosed. Page 19 of 28 8 2015 U.S. Dist. LEXIS 179647, *79 user may insert a media file; instead, the media object I. "Code means. . . for enabling a receipt of an identifier also has a functional component. See Defs.' identification of one or more image files, video files Open. Br. 36, ECF No. 219. or audio files to associate with said account." To define the pre-processing aspect of the media object Go to table9 identifier, Plaintiff proffers that the textual descriptions and pseudo-code provide sufficient structures.9 Pl.'s The parties agree that "code means. . . for enabling a Resp. Br. 33-34, ECF No. 227 (citing Bedrock Computer receipt of an identification of one or more image files, Techs., LLC v. Softlayer Techs., Inc., No. 6:09-cv-269 video files or audio files to associate with said account" LED-JDL, 2011 U.S. Dist. LEXIS 3512, at *47-48 (E.D. is a means-plus-function clause triggering 35 U.S.C. § Tex. Jan. 10, 2011)). The Court agrees that such 112, ¶ 6. The parties also agree that the claim term's descriptions could provide sufficient boundaries for an function is "enabling a receipt of an identification of one invention and that fully elaborated code is not or more image files, video files or audio files to necessary. See Noah Sys., 675 F.3d at 1312. associate with said account." The parties disagree as to whether the corresponding structure to implement [*82] Defendants argue that the descriptions and disclosed the function is sufficiently defined. code only describe the invention from the point of view of the client, rather than giving information [*80] about "[A] means-plus-function clause is indefinite if a person how the software is implemented. Defs.' Resp. Br. 26, of ordinary skill in the art would be unable to recognize ECF No. 229. For instance, Appendix A of the '557 the structure in the specification and associate it with patent discloses the code that a client would add to their the corresponding function in the claim." Noah Sys., 675 website to use the preferred embodiment, but does not F.3d at 1312 (quoting AllVoice Computing PLC v. detail the code necessary for the media object identifier Nuance Commc'ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. to pre-process an object. See id.; '557 patent, 5:39-41, 2007)). "[A] challenge to a claim containing a means- App. 32, ECF No. 219-1; Defs.' App. Supp. Open. Br. plus-function limitation as lacking structural support Ex. 16 (Berger Decl.) ¶ 50, App. 316, ECF No. 219-4; requires a finding, by clear and convincing evidence, see also Berger Decl. ¶ 50, App. 316, ECF No. 219-4. that the specification lacks disclosure of structure The text instead describes the use and function of the sufficient to be understood by one skilled in the art as invention. being adequate to perform the recited function." Chi. Bd. Options Exch., Inc. v. Int'l Secs. Exch., LLC, 748 F.3d The Court finds that Plaintiff has provided sufficient 1134, 1141 (Fed. Cir. 2014) (quoting Budde v. Harley— support to define the appearance and operation of the Davidson, Inc., 250 F.3d 1369, 1376-77 (Fed. Cir. media object identifier, and therefore Defendants have 2001)). "Structure disclosed in the specification is not met their burden to show that there is no clear 'corresponding' structure only if the specification or limitation for how the media object identifier performs prosecution history clearly links or associates that the pre-processing. See Hill-Rom Servs., 755 F.3d at structure to the function recited in the claim." Minks v. 1374-75 (holding claim terms may be defined with Polaris Indus., Inc., 546 F.3d 1364, 1377 (Fed. Cir. reference to their function); High Point Sarl, 2012 U.S. 2008). When the means-plus-function limitation is Dist. LEXIS 108485, at *15. Therefore, the claims computer-implemented, the specification must disclose containing the term are not indefinite. See Nautilus, 134 an algorithm, or a step-by-step process for achieving the S. Ct. at 2130. Accordingly, the Court adopts Plaintiff's function. Noah Sys., 675 F.3d at 1312. The specification construction, finding that the "media object identifier" can express the algorithm "in any understandable terms means "software that includes a graphical user interface including as a mathematical formula, in prose, or as a for acquiring media objects, such as a photo, video, or flow chart, or in any other manner that provides audio files, [*81] and pre-processing them in sufficient structure." Id. "[F]ailure to disclose preparation for transmission elsewhere." adequate [*83] structure corresponding to the recited function in accordance with 35 U.S.C. § 112, paragraph 1, results in the claim being of indefinite scope, and thus invalid, under 35 U.S.C. § 112, paragraph 2." Budde, 250 F.3d at 1376. 9 Inthe briefing, Plaintiff offered this argument in a different context to demonstrate that 35 U.S.C. § 112, ¶ 6 does not Defendants argue that there is insufficient structure apply because there are sufficient structures disclosed. disclosed to explain how information is received. Citing Page 20 of 28 8 2015 U.S. Dist. LEXIS 179647, *83 Noah System and Aristocrat Technologies, they argue without providing some detail about the means to that disclosing generic "software" as the structure accomplish the function[,] is not enough.") (internal corresponding to means-plus-function limitations is not quotation marks omitted). Defendants also contend that sufficient without disclosing the step-by-step procedure. Plaintiff's disclosure that the media object may be an See Noah Sys., 675 F.3d at 1312; Aristocrat Techs. ActiveX or Java component is irrelevant because Austl. PTY Ltd. v. Int'l Game Tech., 521 F.3d 1328, ActiveX and Java are only languages in which software 1333 (Fed. Cir. 2008). Defendants argue that there is no may be written, rather than particular structures. Defs.' description of a procedure that would communicate file Open. Br. 30, ECF No. 219 (citing '515 patent 3:33-36, names or correlate files with account information. Defs.' 3:40-42, App. 65, ECF No. 219-2; Berger Decl. ¶ 29, Open. Br. 28, ECF No. 219. In response to the support App. 309-10, ECF No. 219-4). Plaintiff lists in the proposed claim construction chart, Defendants present five specific arguments for a lack of Fourth, Defendants argue that passages at column 4, structure. lines 4 through 6 and lines 17 through 34 of the '515 patent do not provide information about corresponding First, Defendants argue that the diagrams in Figures 1 structures. Instead, Defendants argue that they merely and 2 offer only a proposed user interface, not any give extraneous information about additional features. indication of "a procedure that would communicate files Defs.' Open. Br. 30-31, ECF No. 219. names or correlate files with account information." Defs.' Open. Br. 28, ECF No. 219 (citing Berger Decl. ¶ 31, Fifth, Defendants note that the '515 patent, unlike the App. 310, ECF No. 219-4). other Patents-in-Suit, does not contain the HTML template "Appendix A." Id. at 31; Berger Decl. ¶¶ 23, 33, Second, Defendants concede that Figures 3 and 4A— App. 308, 311, ECF [*86] No. 219-4. Moreover, 4B present some information about the media [*84] Appendix A in the '557 and '482 patents also does not object identifier and the media sender, but, Defendants present the relevant source code, namely the code argue, the figures do not adequately disclose the underlying the "PWT.addimagecontrol();" script. Defs.' structures. Defs.' Open. Br. 29, ECF No. 219. According Open. Br. 31, ECF No. 219; Berger Decl. ¶ 24, App. to Defendants, "[s]ome entries in the figures, such as 308, ECF No. 219-4; '482 patent (Appendix A), App. 48, 'fileName' and 'imageName,' are merely variables. ECF No. 219-1. Instead, the HTML template in Although others are labeled as functions, in fact they are Appendix A provides that the relevant code will be merely 'declarations' that provide 'the functions' name downloaded from the PictureWorks Server. Berger Decl. and the identity of the inputs (i.e., parameters) that will ¶¶ 24, 33, App. 308, 311, ECF No. 219-4; '482 patent go into [the functions].'" Id. (citing Berger Decl. ¶ 25, (Appendix A), App. 47-49, ECF No. 219-1; see also App. 308, ECF No. 219-4). Defendants' expert DePuy Spine, 469 F.3d at 1023 (holding that concludes that no entry in the figures defines the incorporation by reference is not sufficient disclosure). operations that the named function would actually perform on the inputs. Id. Defendants also argue that Plaintiff argues that the patent has disclosed sufficient Figures 4A and 4B are unrelated to "enabling a receipt information about the structure of the "code means" of [content]," which is essential for the "code means" term through prose, code, and pseudo-code, and thus term; instead, they depict transmissions. Defs.' Open. the term is not indefinite. Pl.'s Open. Br. 35, ECF No. Br. 29, ECF No. 219; see '515 patent, 3:21-25, 6:37-38, 217 (relying on TecSec, Inc. v. Int'l Bus. Mach. Corp., App. 65, ECF No. 219-2. 731 F.3d 1336, 1348-49 (Fed. Cir. 2013)) (finding the structure of means plus function terms such as Third, Defendants contend that column 3 lines 18-54 of "selecting an object to encrypt," and others, to be the '515 patent do not present any structure and instead sufficiently disclosed when the specification provided define the media object identifier using purely functional examples of using software to perform the claimed terms. According to Defendants, merely describing how function). According to Plaintiff, it has provided a a user could interact with the media object identifier detailed example of using the software, satisfying the does [*85] not disclose how the software performs the need for structure. For instance, Plaintiff argues that it function of "enabling a receipt of an identification of one has presented [*87] two separate ways in which the or more. . . files." See Berger Decl. ¶¶ 28, 30, App. 309- media object identifier structures enable the claimed 10, ECF No. 219-4; see also Function Media, LLC v. function, the "drag and drop" and "browse dialogue" Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) ("It is features. Pl.'s Resp. Br. 36, ECF No. 227. Plaintiff well settled that [s]imply disclosing software, however, explains that a person of ordinary skill in the art would Page 21 of 28 8 2015 U.S. Dist. LEXIS 179647, *87 have readily understood the functionality being arguments to the contrary, there is nothing more to described because drag-and-drop and click-to-browse describe how the user information is actually associated features were already well known in the art at the time with the account or how the software functions. See id. of the invention. Id. at 37. In essence, Plaintiff argues at 118:5-6. that Defendants demand a particular type of disclosure, namely source code, which is "well beyond what is The Court finds this instant case to be analogous to the required by the case law and should be rejected." Pl.'s Augme Technologies. In Augme Technologies, the Sur-Reply Br. 3, ECF No. 235. Federal Circuit held that "[s]imply disclosing a black box that performs the recited function is not a sufficient In its Sur-Reply Brief, Plaintiff points to excerpts of explanation of the algorithm required to render the Jones' declaration and deposition as examples of means-plus-function term definite." Augme Techs., Inc. structure associated with the "code means" term. Id. v. Yahoo! Inc., 755 F.3d 1326, 1338 (Fed. Cir. 2014). In (citing Jones Dep. 115:10-118:10, App 13-14, ECF No. the case, the specification describes that the "code 235). In the deposition excerpts, Jones explains: assembler instructions" assemble the second code module. The specifications disclose inputs and outputs The specification describes, first of all, that this is a of the "code assembler instructions." Id. There is no media object identifier, that it is sized according to disclosure of how the second code module is parameters it receives, that it is displayed on the assembled. Id. The purported software code merely pages as disclosed separately for ActiveX and Java explained that the "code assembler instructions" were in Figures 1 and 2. It describes the user interaction, the element that does the assembly. [*90] Id. In the which is specifically would [*88] be detecting that instant action, Plaintiff's code means that enables the mouse pointer is over the display of the media receipt of an identification of content, without further object identifier, and then the interaction -- that the explanation of the algorithm, is merely a black box. user releases their button, so both of those events are detected in the drag-and-drop operation. The Court next will consider TecSec, the case upon Jones Dep. 116:10-21, App 13-14, ECF No. 235. In which Plaintiff relies for the proposition that providing response to the next question asking whether the above examples of using the software is sufficient disclosure. description is the extent of the algorithm for 731 F.3d at 1348-49. In TecSec, the examples were far accomplishing function, Jones continues: more inclusive and detailed than the descriptions given That allows the acquisition of the -- the identification in the patents in the instant case. See id. at 1349. For of the media object. It also -- the specification also instance, one example not only "describes how a user describes a filename that is -- it's described as an interacts with the software applications to cause them to object that stores the name of the identified file, and select an object to encrypt, select a label for the object, then it also describes the capability of the media select an encryption algorithm, encrypt the object, and object identifier to -- how it can receive information label the encrypted object," it goes on and "details how about, for example, an account, like a user ID or the software determines if the user is authorized to view password. the object and, if so, decrypts the object." Id. Thus, the patents in TecSec give both descriptions of the function Id. at 116:24-117:7. He concludes that, beyond these from a user-interface standpoint and descriptions of how steps, the specification "does not describe another level the software determines if the user is authorized. See id. below that," such as source code. Id. at 118:5-6. Here, by contrast, the Court finds that the "drag and The Court finds that the detailed step-by-step drop" and "browse dialogue" features merely describe instructions given in the '515 patent are only presented the user interface, in particular how a user [*91] selects from the user's perspective. Jones has explained that media content, rather than how such features work. The the patent clearly describes the appearance of the Court finds defense expert Berger's explanation to be media object identifier on a web-page in the [*89] credible. Berger described that software to accept a preferred embodiment. See id. at 116:10-21. Jones selection of media content using a drag and drop further explained "the user interaction," in which a user feature or a browse dialogue could be written in selects content using a browse dialogue or a drag and "countless ways." Berger Decl. ¶ 46, App. 314-15, ECF drop feature. Id. The media object identifier uses a user No. 219-4. Thus, disclosing that a "media object ID or password to receive information about an account. identifier" accepts user input in these ways "does not Id. at 116:24-117:7. However, despite Plaintiff's indicate to a person having ordinary skill in the art how Page 22 of 28 8 2015 U.S. Dist. LEXIS 179647, *91 that function is implemented." Id. "Simply disclosing a SO ORDERED [*93] on this 21st day of March, 2015. black box that performs the recited function is not a sufficient explanation of the algorithm required to render /s/ Reed O'Connor the means-plus-function term definite."Augme Techs., Reed O'Connor 755 F.3d at 1338. UNITED STATES DISTRICT JUDGE Accordingly, the Court finds that Defendants have met their burden of showing by clear and convincing evidence that there is no corresponding structure to support the "code means" function, and therefore the term is indefinite. IV. CONCLUSION In summary, the Court construes the disputed terms from the Patents-in-Suit as follows: (1) "Pre-processing" means "modifying the [media object data/digital content data/one or more image files, video files, or audio files], as opposed to data merely associated with [*92] the [media object/digital content/image files, video files, audio files], at the client or local device prior to transmission to a remote device." (2) For "server device," "host server," and "distributing party," there is no construction necessary. "Remote device," "remote server," and "a device separate from said client device" are construed according to Plaintiff's proposed constructions. (3) Terms relating to the receipt, provision, or transmission of pre-processing parameters are construed according to Plaintiff's proposed constructions. (4) For terms relating to the preambles of the '482 and '515 patents, there is no construction necessary. (5) "Distributing" and "distribution" mean "sharing." (6) "Said identification" means "said identification of digital content." (7) "Said client device" is indefinite. (8) "Media object identifier" means "software that includes a graphical user interface for acquiring media objects, such as a photo, video, or audio files, and pre- processing them in preparation for transmission elsewhere." (9) "Code means. . . for enabling a receipt of an identification of one or more image files, video files or audio files to associate with said account" is indefinite. Page 23 of 28 8 2015 U.S. Dist. LEXIS 179647, *93 Table1 (Return to related document text) Plaintiff Defendants pre-processing modifying the [media modification before further object data/digital processing / modifying before content data/one or further processing more image files, video OR files, or audio modifying the [media object files],1 as opposed to data/digital content data/one or data merely associated more image files, video files, or with the [media audio files], as opposed to data object/digital merely associated with the [media content/image files, object/digital content/image video files, audio files, video files, audio files], files], at the client at the client or local [device] or local device in (sic) prior to transmission to a preparation for remote device2 transmission to a remote device Table1 (Return to related document text) Table2 (Return to related document text) Plaintiff Defendants server device No construction device/server [*23] from which the necessary pre-processing parameters are received by a client device, to which the pre-processed selected content is sent from the client device, and which delivers the pre-processed selected content to one or more recipient devices4 host server No construction device/server that provides computers necessary with access to data or programs and from which the pre-processing parameters are 1 According to footnote two of the parties' Joint Claim Construction Chart: "The Patents-in-Suit use different terms in the claims to describe the items that are pre-processed (i.e., 'media object,' 'digital content,' 'image files, video files, or audio files'). The bracketed text indicates the substitution of these terms in their respective claims in the Patents-in-Suit." 2 As mentioned in footnote four of the parties' Joint Claim Construction Chart, because Defendants [*12] first posed this alternative construction in their Responsive Claim Construction Brief, Summit 6 did not have an opportunity to respond to this argument in the briefing. See Defs.' Resp. Br. 5, ECF No. 229. 4 Inthe parties' Joint Claim Construction Chart, Defendants include the following argument for each of the terms in this section: "In order for the claims containing this term to meet the written description requirement, the term would have to be construed to mean: [proposed construction of term.] Under this term's plain meaning, the identified claims containing the term are invalid under 35 U.S.C. § 112 (e.g.[,] for lack of written description and indefiniteness)." [*25] Page 24 of 28 8 2015 U.S. Dist. LEXIS 179647, *25 Plaintiff Defendants received by a client device, to which the pre-processed selected content is sent from the client device, and which delivers the pre-processed selected content to one or more recipient devices remote device device/server device/server that is not co-located not co-located with the client device and from which with the client the pre-processing parameters are device received by the local device or the client device, to which the pre-processed selected content is sent from the local device or the client device, and which delivers the preprocessed selected content to one or more recipient devices remote server device/server device/server that is not co-located with not co-located the client device and from which the with the client pre-processing parameters are received by device a client device, to which the pre-processed selected [*24] content is sent from the client device, and which delivers the pre-processed selected content to one or more recipient devices a device device other device/server other than the client device separate from than said client from which the pre-processing parameters said client device are received by a client device, to which device the pre-processed selected content is sent from the client device, and which delivers the pre-processed selected content to one or more recipient devices distributing No construction party from which the pre-processing party necessary parameters are received by a client device, to which the pre-processed selected content is sent from the client device, and which delivers the pre-processed selected content to one or more recipient devices Table2 (Return to related document text) Table3 (Return to related document text) Plaintiff Defendants pre-processing pre-processing pre-processing parameters that are parameters parameters not already stored on the client received from a received from a device, but are received from a Page 25 of 28 8 2015 U.S. Dist. LEXIS 179647, *24 Plaintiff Defendants remote server server not colocated remote server5 with the client device pre-processing pre-processing pre-processing parameters that are parameters that parameters that not already stored on the local are received from are received device or the client device, but a device separate from a device are received from a device separate from said client other than the from the client device device client device pre-processing pre-processing pre-processing parameters that are parameters being parameters being not already stored on the local provided to said provided to said device or the client device, [*36] but client device client device are provided to the client device from a device from a device by a device separate from the separate from other than the client device said client client device device pre-processing pre-processing pre-processing parameters that parameters that parameters that are not already stored on the were provided to were provided to client device, but are provided said client said client to the client device by a device device by a device by a separate from the client device device separate device other than from said client the client device device pre-processing pre-processing pre-processing parameters that parameters that parameters that are not already stored on the have been have been client device, but are provided provided to said provided to said to the client device by a device client device client device separate from the client device from a device from a device separate other than the from said client device client device pre-processing pre-processing pre-processing parameters that are parameters that parameters that not already stored on the client have been have been device, but are loaded onto the loaded onto loaded onto said client device by a device separate said client client device from the client device device [*37] by a other than the device separate client device from said client device 5 Inthe Claim Construction Chart, Defendants include the following argument for each of the terms in this section: "To the extent the claims containing these terms are not invalid under 35 U.S.C. § 112 (e.g., for lack of written description and indefiniteness), this term means: [proposed construction of the term]." Page 26 of 28 8 2015 U.S. Dist. LEXIS 179647, *37 Plaintiff Defendants receiving receiving [receiving] from a remote device pre-processing pre-processing pre-processing parameters that are parameters from parameters from a not already stored on the local a remote device device not device or the client device colocated with the client device pre-processing pre-processing pre-processing parameters that are parameters that parameters that not already stored on the client are received are received device, but are received from a from a from a device remote device remote device not co-located with the client device [transmitting / No construction [transmitting / transmits] transmits] necessary pre-processing parameters to the pre-processing client device that are not already parameters to stored on the client device said client device Table3 (Return to related document text) Table4 (Return to related document text) Plaintiff Defendants The preambles are not The steps of the claim performed on the limitations of the client device are performed during the claims and thus not execution of one computer program subject to construction Table4 (Return to related document text) Table5 (Return to related document text) Plaintiff Defendants [distributing / No construction making publicly available / the distribution] necessary act of making publicly available Table5 (Return to related document text) Table6 (Return to related document text) Plaintiff Defendants said said Indefinite identification identification of [in claims 17-18 digital content of the '482 patent] Table6 (Return to related document text) Page 27 of 28 8 2015 U.S. Dist. LEXIS 179647, *37 Table7 (Return to related document text) Plaintiff Defendants said client device said Indefinite [in claim 25] identification of digital content Table7 (Return to related document text) Table8 (Return to related document text) Plaintiff Defendants media object No construction Indefinite identifier necessary Table8 (Return to related document text) Table9 (Return to related document text) Plaintiff Defendants code means. . . Function: Function: enabling a receipt of for enabling a enabling a an identification of one or more receipt of an receipt of an image files, video files or audio identification identification of files to associate with said of one or one or more account; more image image files, files, video video files, or files or audio audio files to files to associate with associate with said account; said account. Structure: Figs. 1-4B; '515:3:18-54, 4:4-6, 4:17-34, 5:13-6:36; and equivalents thereof. Table9 (Return to related document text) End of Document Page 28 of 28