Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 1 of 7 Page ID #:1034
`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 1 of 7 Page ID #:1034
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`EXHIBIT 4
`EXHIBIT 4
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 2 of 7 Page ID #:1035
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 1 of 13 PageID #: 7216
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
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`Defendants.
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
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`Defendants.
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`Case No. 2:16-cv-00393-RWS
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`LEAD CASE
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`Case No. 2:16-cv-00871-RWS
`Case No. 2:16-cv-00872-RWS
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`Case No. 2:16-cv-00741-RWS
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`LEAD CASE
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`Case No. 2:16-cv-00858-RWS
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`PLAINTIFFS’ MOTION TO RECONSIDER A PORTION OF THIS COURT’S
`MEMORANDUM OPINION AND ORDER CONSTRUING CERTAIN TERMS
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`This Court issued a claim construction order (“Opinion”), Dkt. No. 2331, on August 16,
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`2017. Shortly thereafter, Plaintiffs (“Uniloc”) filed a Motion to Reconsider a Portion of that
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`Opinion, Dkt. No. 266, but this Court’s decision on eligibility, Dkt. No. 267, mooted that motion
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`before Defendants could file an opposition.
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`Uniloc now renews the portions of that previously filed motion that relate to the ’578 and
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`’293 patents. In this Motion, Uniloc requests the Court to modify, in part, the Court’s claim
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`construction of “application launcher program” and “application program,” as it applies to those
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`patents.
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`1 All citations in this Motion are to the docket in 2:16-cv-00741-RWS.
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`1
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 3 of 7 Page ID #:1036
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 2 of 13 PageID #: 7217
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`In support of this request, Uniloc submits the accompanying declaration of Dr. Michael
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`Shamos.2
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`Other actions
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`After the Federal Circuit remanded this action with respect to ’578 and ’293 patents,
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`Uniloc 20173, the current owner, filed actions on those patents against other entities. Because of
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`venue restrictions imposed by TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct.
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`1514 (2017), those actions had to be filed in districts other than this one. Currently, actions on
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`these patents are thus pending before eight other District Court judges.
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`The procedure in each of those districts is to proceed to claim construction during the
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`earlier phases of the action. However, Uniloc expects that most, perhaps all, of those courts will
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`delay their own decision on claim construction, to await this Court’s decision on this motion.
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`The Court should modify its construction of “application launcher program,” as to
`the ’578 patent.
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`I.
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`This Court construed “application launcher program” across all three patents in which it
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`then appeared – including the ’578 patent – as “a program distributed to a client to initially
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`populate a user desktop and to request an instance of the application for execution at the client”
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`(emphasis added). Opinion at 27-31. Uniloc now asks the Court, with respect to claims of the
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`’578 patent, to modify the second half of that construction to read “to request execution of the
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`application program.”
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`2 If this Court holds a hearing on the motion, Dr. Shamos will testify.
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`3 As the Federal Circuit added Uniloc 2017 to this action as a plaintiff, Legacy Plaintiffs will
`move to add that entity’s name to the case caption.
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`2
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 4 of 7 Page ID #:1037
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 10 of 13 PageID #: 7225
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`refers to, or implies, “request[ing] an instance of the application program for execution at the
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`client,” the requirement the existing construction adds.
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`Dr. Shamos reviewed the specification of the ’578 patent, and testifies that nothing in the
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`specification would cause a person of skill in the art to limit the ordinary meaning of the term
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`(¶¶ 36-49). Further, he cites specific portions of the specification that would confirm the
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`inventors intended the ordinary meaning to apply (¶¶ 42-49).
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`He points out the advantage of the invention of the ’578 patent is that a centralized
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`database containing stored user and administrator preferences can be queried and updated. As he
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`testifies, because that advantage does not depend on the whether the applications are executed at
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`the client or the server, a POSITA would thus not have expected the inventors to limit the
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`invention to an embodiment that executes applications only on the client, and they did not (¶ 37).
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`Although the specification of the ’578 patent describes an “alternative embodiment” that
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`executes an instance of the application at the client, Dr. Shamos testifies that a POSITA reading
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`the specification and claim 1 would not read such a limitation into the ordinary meaning of the
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`broadest claim simply because that feature is described as part of an “alternative” embodiment
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`(¶ 40).
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`As reflected in his testimony and the documented examples, a construction requiring
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`execution occur only at the client does not reflect the ordinary meaning of that term.
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`II.
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`The Court should modify its construction of “application program” as to the ’578
`and ’293 patents.
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`The Court construed “application program” to mean “the code associated with the
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`underlying program functions that is a separate application from a browser interface and does not
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`execute within the browser window.” Uniloc requests the Court – with respect to the ’578 and
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`’293 patents –to modify the construction by deleting the italicized phrase.
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 5 of 7 Page ID #:1038
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 11 of 13 PageID #: 7226
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`An application is software written to perform a particular function for a user -- as
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`opposed to system software, which is designed to operate the network. Nothing in the ordinary
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`meaning of “application,” nor any other language in the asserted claims of the ’578 and ’293
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`patents, if given its ordinary meaning, would rule out a program executed within the browser
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`window.
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`The Opinion’s construction, which included “does not execute within the browser
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`window,” seemingly applies to all four patents the Court was then considering. Opinion at 19-
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`23. The sole stated basis for adding that phrase to the construction was that the inventors of the
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`’466 patent, during the prosecution history of the ’466 patent, argued “an instance of the
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`application program … executes locally at the client as a separate application from the browser
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`interface [and] would not execute within the browser window.” Opinion at 20.
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`The statements on which the Court relied, made during the prosecution of the ’466 patent,
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`were intended to describe the invention of the claims of that patent, which literally require
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`“providing an instance of the … application… to the client for execution,” seemingly ruling out -
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`for those claims - executing an application remotely within the browser window.
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`But, for the reasons described earlier, under Abbott Laboratories, statements in the ’466
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`prosecution history cannot be considered at all in construing the ’578 patent.
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`Further, because the statements appear to be simply describing features mandated by the
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`specific limitations of the claims in the ’466 patent prosecution history, a person of skill in the art
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`would not understand the statements of the ’466 patent inventors as applying to inventions
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`claimed in the ’578 and ’293 patents, which do not have the features the statements describe.
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`Because the claims of the other patents omit any requirement of providing an instance of the
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`application for execution locally at the client, the statements the Opinion relies upon would have
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 6 of 7 Page ID #:1039
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 12 of 13 PageID #: 7227
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`been untrue if they had appeared in the prosecution history of the other patents.
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`Dr. Shamos, in his declaration (¶¶ 50-53), testifies that no portion of the ’578 patent
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`contains, or otherwise supports, a construction of claim 1 of the ’578 patent that would exclude
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`an application that executes within the browser window. In fact, he cited a passage from the
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`specification (8:7-20) of that patent that describes an exemplary situation in which the
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`application is literally executed within the browser window:
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`It is further to be understood that, in the JAVA™ environment, currently available
`web browser applications are known to those of skill in the art which provide a
`user interface and allow hardware independent communication such as that
`currently specified by Internet protocols. Thus, the application launcher programs
`may be applets which display the icon which are associated with a web browser
`Universal Resource Locator (URL) which points to the location of the applet to be
`executed. Upon selection of the icon displayed by the application launcher, the
`selected application is “launched” by requesting the URL of the application from
`the on-demand server. Such requests may be made utilizing conventional Hyper-
`Text Transfer Protocol (HTTP) communications or other suitable protocols.
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`Dr. Shamos further testifies:
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`The above passage describes an exemplary situation in which the application is
`literally executed within the browser window. A Java applet is a hardware- and
`operating system-independent piece of code, written in a language known as Java
`bytecode, which is downloaded to a client and executed using software known as a
`“Java Virtual Machine” (JVM). All major browsers implemented a JVM;
`otherwise, they would not have been able to support webpages containing Java
`applets. Thus, the construction of claim 1 would not read on this embodiment.
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`A construction that would result in no claim reading on a preferred embodiment is highly
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`suspect. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342-43 (Fed. Cir. 2001).
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`As Dr. Shamos testifies, the claims of the ’578 patent do not exclude an application that
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`executes within the browser window, and the specification of that patent includes an embodiment
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`that literally executes within the browser window. Similarly, the claims of the ’293 patent7 do
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`7 As to the ’293 patent, the statements, apart from being irrelevant to the invention of that patent,
`would not qualify under the Microsoft standard, dismissed earlier.
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`Case 8:19-cv-01150-DOC-KES Document 62-5 Filed 11/06/20 Page 7 of 7 Page ID #:1040
`Case 2:16-cv-00741-RWS Document 344 Filed 11/05/19 Page 13 of 13 PageID #: 7228
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`not relate at all to where or how applications are executed, but only to transmitting applications
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`from a network management server to an intermediate server. There would have been no reason
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`for the inventors to impose a limitation - or even to mention - a feature not in the claims, and
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`thus irrelevant to the invention or to any art cited during the prosecution of those patents.
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`Date: November 5, 2019
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`Respectfully submitted,
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`/s/ James J. Foster
`Paul J. Hayes
`Kevin Gannon
`James J. Foster
`Prince Lobel Tye LLP
`One International Place - Suite 3700
`Boston, MA 02110
`Tel: 617-456-8000
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
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`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
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`ATTORNEYS FOR THE PLAINTIFFS
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on November 5, 2019.
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`/s/ James J. Foster
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