Case 8:19-cv-01151-JLS-DFM Document 24-5 Filed 09/12/19 Page 1 of 20 Page ID #:209
`Case 8:19-cv-01151-JLS-DFM Document 24-5 Filed 09/12/19 Page 1 of 20 Page ID #:209
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`EXHIBIT 3
`EXHIBIT 3
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`
`§
`§ Case No. 2:16-cv-00862-RWS
`§
`
`LEAD CASE
`§
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`
`
`
`
`§
`§ Case No. 2:16-cv-01193-RWS
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`UNILOC USA INC., et al.,
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`Plaintiffs,
`
`v.
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`NETSUITE, INC.,
`NUTANIX, INC.,
`
`Defendants.
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`
`PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF
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`TABLE OF CONTENTS
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`OVERVIEW OF THE PATENTS .................................................................................................. 2
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`Claim Construction Issues .............................................................................................................. 3
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`“Application Launcher Program” - as used in the ’578 patent only ........................................... 4
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` I. The ordinary meaning of “application launcher program” supports Uniloc’s position. .. 5
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` II. Claim 1 of the ’578 patent supports Uniloc’s position. ................................................... 5
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` III. The specification of the ’578 patent supports Uniloc’s position. .................................... 6
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` IV. The Court must modify its construction from a related case, as to the ’578 patent. ........ 6
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` A. The construction does not reflect the ordinary meaning of
`“application launcher.” ........................................................................................... 7
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` B. The Opinion erred in using the prosecution history of the
`’466 patent to construe claims of the ’578 patent. .................................................. 8
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` C. The Opinion erred in using the prosecution history of the
`’766 patent to construe the claims of the ’578 patent. ............................................ 9
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`“Application Program” - ’578, ’293, and ’766 patents only ..................................................... 11
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`“On demand server” - ’578 patent............................................................................................. 14
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`“Target on-demand server” - ’293 patent .................................................................................. 14
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`“Executing the application program” - ’578 patent .................................................................. 15
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`“Configuration manager program” - ’578 patent ...................................................................... 16
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`“License availability” - ’766 patent .......................................................................................... 16
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`“Distributing the file packet” - ’293 patent ............................................................................... 16
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`“License management server” - ’766 patent ............................................................................. 17
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`i
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`
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`Plaintiffs (“Uniloc”) have asserted claims from four IBM patents, directed towards four
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`different inventions, with each invention relating to a particular portion of a distributed computer
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`network. The patents are largely independent. A company could infringe a patent covering one
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`portion of its network, but not infringe a second patent covering a second portion, if that
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`company chose not to use the invention of the second patent in that second portion.
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`The ’466 patent1 describes methods of managing application programs. The claims of the
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`’466 patent are directed to methods, systems, and products for downloading applications to an
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`individual computer terminal (“client”) for execution at that client. Thus, all of the claims of the
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`’466 patent incorporate specific language requiring downloading of applications to the client for
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`execution, namely: “providing an instance of the… application… to the client for execution.”
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`Because those claims have that specific language, there appears to be very little disagreement
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`between the parties as to how the claims of the ’466 patent should be construed.
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`
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`But the claims of the ’5782 patent are directed towards a different invention, which
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`invention can be practiced in networks where applications are not downloaded to clients, and
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`execution is instead at a server. For that reason – and in sharp contrast to the claims of the ’466
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`patent filed on the same day – the IBM inventors omitted from the claims of the ’578 patent any
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`language that would require downloading to, or execution at, the client.
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`The principal claim construction dispute in these cases, as well as in earlier cases, arises
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`from the effort by defendants to persuade the Court to read into the claims of the ’578 patent
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`limitations found only in the ’466 patent claims.
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`1 U.S. Patent No. 6,510,466 (Ex. A).
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`2 U.S. Patent No. 6,324,578 (Ex. B).
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`1
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`OVERVIEW OF THE PATENTS
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`
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`The ’578 patent describes (what were in 1998) innovative methods of managing
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`configurable application programs on a computer network for a large enterprise.3 The ’466
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`patent also describes methods of managing patent applications, but the written description of that
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`patent differs from the ’578 disclosure.4
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`Both the ’578 and ’466 disclosures describe a computer network, which connects each
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`individual user’s computer terminal (“client terminal,” or simply “client”) to a remote server
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`(“server”) responsible for supporting that client, as well as for supporting a number of other
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`clients. The network, in turn, connects the remote servers to a central network management
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`server. FIG. 1 of the ’466 patent graphically illustrates this server/client arrangement:
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`3 The IBM inventors filed the ’766 patent (U.S. Patent No. 6,728,766 (Ex. C)) as a divisional of
`the ’578, and thus it has the identical written description (“the ’578 disclosure”).
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`4 The IBM inventors filed the ’293 patent (U.S. Patent No. 7,069,293 (Ex. D)) as a divisional of
`the ’466, and thus it has a written description identical to that of the ’466 (“the ’466 disclosure”).
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`2
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`An application program (“application”) is software written to perform a particular
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`function for a user (as opposed to system software, which is designed to operate the network).
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`Common examples of applications are word processing applications (e.g., Microsoft Word) and
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`spreadsheets (e.g., Microsoft Excel).
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`In 1998, designers of computer networks for large enterprises were confronted with the
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`problem of peripatetic users, i.e., users who login at different times from different clients. The
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`IBM inventors, in these patents, describe innovative ways, circa 1998, they had reduced to
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`practice to allow a peripatetic user to access the user’s authorized applications from any client on
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`the network, while maintaining the user’s own selected preferences.
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`Computer network designers in 1998 were also confronted by the problems of efficiently
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`distributing applications throughout the enterprise, and of then frequently (and efficiently)
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`updating those applications, while maintaining consistency among users, as to both application
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`updates and administrator preferences. The IBM inventors devised, and reduced to practice,
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`innovative ways to accomplish that.
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`Finally, the IBM inventors devised methods to manage the allocation of licenses to
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`applications in the enterprise environment, where the number of users accessing, or seeking to
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`access, an application would exceed the number of existing licenses.
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`Claim Construction Issues
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`Exhibit A to the Joint Claim Construction Statement and Prehearing Memorandum listed
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`a large number of claim terms/phrases on which the parties had not reached agreement. Since
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`filing that document, the parties have eliminated certain disputes, and narrowed others. This
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`brief discusses, in order of priority, the previously identified terms/phrases on which the parties
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`still have a dispute.
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`3
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`“Application Launcher Program” - as used in the ’578 patent only
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`This term appears, as follows, in claim 15 of the ’578 patent:
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`A method… comprising the steps of: …distributing an application launcher
`program associated with the application program to a client …;[and] obtaining a
`user set … associated with [a user] executing the application launcher
`program.”
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`Claim term
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`“application launcher
`program associated with the
`application program” /
`“application launcher
`programs associated with
`each of the set of the plurality
`of application programs”
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`Uniloc’s proposed
`construction
`a program distributed to a
`client to initially populate a
`user desktop and to request
`execution of the application
`program
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`Defendants’ proposed
`construction
`a program distributed to a
`client to initially populate a
`user desktop and to request an
`instance of the application
`program for execution at the
`client, and to specify one or
`more of the configurable
`parameters of the application
`program
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`Defendants seem to agree with Uniloc’s construction, as far as it goes, including that the
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`application launcher requests execution of the application. But Defendants want to add an
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`extraneous requirement that the requested execution of the application occur at the client. That
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`construction, however, would contradict the ordinary meaning of “application launcher
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`program,” and needlessly exclude embodiments of the ’578 patented invention in which the
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`application executes on the server.6
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`5 In discussing the use of terms in the ’578 patent, this brief will focus on claim 1, as
`representative, but Uniloc’s arguments would be identical for the use of those terms in other
`claims of the ’578 patent.
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`6 Defendants also seek to add to the construction “to specify one or more of the configurable
`parameters of the application program.” Nothing in the specification, however, seems to require
`that. At one point, the specification describes an embodiment that does not have that feature
`(12:26-31).
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`4
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`The ordinary meaning of “application launcher program” supports Uniloc’s
`position.
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`I.
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`
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`Uniloc submits the accompanying declaration of Dr. Michael Shamos, as to the ordinary
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`meaning of “application launcher program.” As Dr. Shamos testifies, “application launcher” was
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`in common use before 1998, when the application for the ’578 patent was filed. (¶ 26-32). A
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`person of skill in the art (POSITA) at that time would have understood an “application launcher”
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`as “a computer program that launches, i.e., starts, another computer program.” (¶ 28). Dr.
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`Shamos provides copious examples, including the use of the term in seven prior art patents7
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`(Shamos Decl., Ex. 2-8) and a 1997 article describing a contemporaneous product, which Novell
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`marketed as the Novell Application Launcher. (Shamos Decl., Ex. 9)8
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`As documented in several of Dr. Shamos’s examples, the ordinary meaning of
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`“application launcher” reads on programs that launch executions of application on the server. (¶
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`29-32).
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`II.
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`Claim 1 of the ’578 patent supports Uniloc’s position.
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`Dr. Shamos testifies nothing in the language of claim 1 of the ’578 patent would limit
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`“application launcher” to programs that launch only at a client. (¶¶ 33-35).
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`Claim 1, in its entirety, reads:
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`A method for management of configurable application programs on a network
`comprising the steps of:
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`installing an application program having a plurality of configurable
`preferences and a plurality of authorized users on a server coupled to the
`network;
`
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`7 Among those patents are ones entitled “Launching Computer Applications,” “Distributed
`Application Launcher for Optimizing Desktops Based on Client characteristics Information,” and
`“Protected Application Launchers with Graphical Interface.” (Shamos Decl., Ex. 2-4).
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`8 The parties have agreed to add “distributed to a client to initially populate a user desktop” to
`the construction, to reflect its description in the specification of the ’578 patent.
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`5
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`distributing an application launcher program associated with the application
`program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences associated
`with one of the plurality of authorized users executing the application
`launcher program;
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`obtaining an administrator set of the plurality of configurable preferences
`from an administrator; and
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`executing the application program using the obtained user set and the obtained
`administrator set of the plurality of configurable preferences responsive to a
`request from one of the plurality of authorized users.
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`(emphasis added). An inspection of the entirety of claim 1 confirms that nothing in that claim
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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 Defendants attempt to add.
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`III. The specification of the ’578 patent supports Uniloc’s position.
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`Dr. Shamos reviews 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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`IV.
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`The Court must modify its construction from a related case, as to the ’578 patent.
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`Uniloc is, of course, aware that, in a related action, this Court, in an interlocutory
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`Memorandum Opinion and Order (“Opinion”)(Ex. E), construed “application launcher program”
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`across all three patents in which it appeared – including the ’578 patent – as “a program
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`6
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`distributed to a client to initially populate a user desktop and to request an instance of the
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`application for execution at the client.” (Emphasis added). In the instant actions, however,
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`Uniloc asks the Court, with respect to claim 1 (and other claims) of the ’578 patent, to modify
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`the second half of that construction.9
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`To support that request, Uniloc highlights several factual statements and legal
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`conclusions in the Opinion that need to be reconsidered, and sets forth the reasons for
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`reconsideration.
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`A.
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`The construction does not reflect the ordinary meaning of “application
`launcher.”
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`The Opinion (at 28) found that “application launcher program” is not a term of art, but
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`was a term coined by the patentees for the Asserted Patents. But in that proceeding there was no
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`evidence before the Court that the patentees coined the term, nor had they claimed to have done
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`so. The Court was apparently misled by a bald assertion, in a brief of the defendants in that case,
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`that the patentees had coined the term. (-393 action, Dkt. 185, at 3)(Ex. F). They had not.
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`The declaration of Dr. Shamos, and the copious examples he cites, establish “application
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`launcher program” was a term of art in 1998, not a term coined by the inventors here. As
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`reflected in his testimony and the documented examples, a construction requiring execution at
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`the client does not reflect the ordinary meaning of that term.10
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`9 Uniloc is not asking the Court to modify the construction with respect to the claims of the ’466
`patent or the ’766 patent in which “application launcher” appears. Similarly, Uniloc is not
`seeking, in this action, a different construction as to those claims of the ’466 and ’766 patents.
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`10 The Opinion (at 4) contains an error. It copies, and labels as claim 1, what is actually claim
`15. The copied claim (15) is narrower than claim 1, because claim 15 requires the server
`“provide an instance of the application program” responsive to a request from a user, a limitation
`not in claim 1. Perhaps this mistake – copying the wrong claim as claim 1 – caused the
`BACKGROUND section of the Opinion (at 4) to state, erroneously:
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`7
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`B.
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`The Opinion erred in using the prosecution history of the ’466 patent to
`construe claims of the ’578 patent.
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`1. Under Abbott Laboratories, the prosecution history of the ’466 patent
`cannot be used to interpret the claims of the ’578 patent.
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`The Opinion (at 29-30) erroneously relies on statements in the prosecution history of the
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`’466 patent to construe how this term is used in claim 1 of the ’578 patent. The Opinion
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`overlooks that the separate applications for the ’578 patent and the ’466 patent were not
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`continuations, divisionals, or continuations-in-part of each other. They were filed as
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`independent, patentably distinct applications, on the same date. Further, the inventive entities
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`differed: the ’578 application included an inventor (Kaminsky) not an inventor on the ’466
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`application; the ’466 application, in turn, included inventors (McGarvey and Salahshour) not on
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`the ’578 application. Even though the applications were co-pending, shared some common
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`inventors, and were commonly assigned, the prosecution history of one cannot limit the claims of
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`the other.
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`Abbott Laboratories v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002) is squarely on point:
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`It is true that the ’839 and ’301 patents are commonly owned by Abbott, and
`the inventor of the ’839 patent is one of the three inventors of the ’301 patent.
`However, the ’839 application was not filed as a continuation, continuation-
`in-part, or divisional application of the ’301 application. These applications
`have no formal relationship and were presented to the patent office as
`patentably distinct inventions. … Under these circumstances, we do not see a
`basis for concluding that statements made about the characteristics of the
`surfactant claimed by the ’301 patent should be attributed to the improved
`surfactant claimed by the ’839 patent, simply because the applications had a
`common assignee, one common inventor, and similar subject matter. We
`therefore conclude that the above-quoted statements from the prosecution
`
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`The ’578 patent relates to obtaining user and administrator preferences for the
`application programs installed at a server and providing these preferences along with
`an instance of the application program to a client for execution.
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`(emphasis added). Inspection of the actual claim 1 readily shows nothing in it supports the
`underlined portion of that statement.
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`8
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`history of the ’301 patent do not create an estoppel with respect to the ’839
`patent.
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`Id. at 1104-05 (Emphasis added); see also In re Berg, 140 F.3d 1428, 1435 n. 7 (Fed. Cir. 1998)
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`(noting, in the context of considering a double patenting rejection, that two applications filed by
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`the same inventor were “not related as by continuation, continuation-in-part, or divisional” and
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`that filing such two separate applications implied “that each application is independent and
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`patentably distinct”).
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`The Opinion (at 11-14) justified reliance on the ’466 prosecution history by citing
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`Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1306-07 (Fed. Cir. 2007) and
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`Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004). The Opinion,
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`however, overlooked that the applications in those cases were formally related, as continuations,
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`continuations-in-part, or divisionals, unlike the relationship between the ’578 application and the
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`’466 application. That is the critical distinction Abbott Laboratories highlights. Additionally, in
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`Verizon and Microsoft, the inventive entities were the same. Here, the inventive entities differ.
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`The inventive entity of the ’466 application did not include Kaminsky and thus that entity would
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`not have authority to surrender, on Kaminsky’s behalf, the scope of claims that Kaminsky, et al.,
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`had obtained.
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`C.
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`The Opinion erred in using the prosecution history of the ’766 patent to
`construe the claims of the ’578 patent.
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`
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`1. Under Microsoft and Georgia-Pacific, statements in the prosecution
`history of the ’766 patent do not affect construction of claims in the ’578
`patent.
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`The Opinion (at 29) erroneously relied on statements in the prosecution history of the
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`’766 patent to construe how this term is used in the ’578 patent. The error, however, is different
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`from the one recited above. Because the application for the ’766 patent was a divisional of the
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`application for the ’578 patent, Abbott Laboratories would not apply. Under the authority of
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`9
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`both Microsoft and Verizon, the prosecution history of the ’766 patent could have relevance to
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`construction of the ’578 patent.
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`But there are two significant limitations, which prevent using those prosecution histories
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`here to construe the ’578 patent. In Microsoft, 357 F.3d at 1349 n. 7, the majority opinion
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`distinguished statements in a prosecution history that “refer more specifically to the references
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`cited against the claims of the [patent being prosecuted] only.” The majority limited the
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`relevance of those statements to construction of the claims of the patent then being prosecuted,
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`holding statements of that type could not be used to construe claims of other patents in the
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`family. Thus, under Microsoft, statements in the prosecution history of the ’766 patent that refer
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`to references cited against claims of the ’766 patent cannot be cited to construe other patents,
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`however related. The statements from the ’766 prosecution history that the Opinion (at 29)
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`refers to clearly fall in that category, as they are statements distinguishing prior art references
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`(Duvvoori, Franklin, Christiano ) cited against only the claims of the ’766 patent.
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`The other significant limitation arises from Georgia-Pacific Corp. v. United States
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`Gypsum Co., 195 F.3d 1322, 1333 (Fed. Cir. 1999). As the majority opinion in Microsoft, 357
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`F.3d at 1350, itself acknowledges, the Georgia-Pacific case:
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`rejected the argument that the patentee was “bound by” statements made
`by the applicant in connection with a later application after the patent in
`suit had already issued. … We rejected the argument that the patentee was
`bound, or estopped, by a statement made in connection with a later
`application on which the examiner of the first application could not have
`relied.
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`Here, the ’578 patent issued on November 27, 2001. The examiner of the ’578 patent
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`could not have relied on any statements made after that date in the prosecution of the ’766 patent,
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`and there were no statements before that date. Although the application for the ’766 patent was
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`filed on April 10, 2001, as it turns out, there were no statements at all in that prosecution until
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`10
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`well after November 27, 2001 because the Patent Office did not issue its first office action in that
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`prosecution until May 7, 2002. The applicant first responded on August 1, 2002. Georgia-
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`Pacific would hold that those, and any later, statements in the ’766 prosecution cannot bind, or
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`estop, the patentee of an earlier patent.
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`Here, where the intrinsic record of the ’578 patent, namely, its specification and
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`prosecution history, does not itself limit the construction of “application launcher,” Georgia-
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`Pacific holds that post-issuance statements in a continuation or divisional do not bind or create
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`an estoppel as to the ’578 patent itself.
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`As to use of the prosecution history of the ’466 patent to construe claims of the ’578
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`patent, Abbott Laboratories creates an absolute bar, as argued earlier. But it is worth noting that
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`if Abbott Laboratories did not apply, Microsoft and Georgia-Pacific still would. The use of
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`statements from the ’466 patent history would have to be shown to satisfy the requirements of
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`both cases, before it could be used to construe claims of the ’578 patent.
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`“Application Program” - ’578, ’293, and ’766 patents only
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`Claim term
`
`application program(s) /
`application(s)
`
`Uniloc’s proposed
`construction
`code associated with
`performing function for a
`user
`
`Defendants’ proposed
`construction
`the code associated with the
`underlying program functions
`that is a separate application
`from a browser interface and
`does not execute within the
`browser window
`
`An application program does
`not include a resource such as
`a static HTML file, a
`dynamically generated page
`created by a CGI-based
`program, or a source of
`information identified by a
`Uniform Resource Locator
`(URL) and published by a
`
`
`
`11
`
`

`

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`
` #:223
`
`Claim term
`
`Uniloc’s proposed
`construction
`
`Defendants’ proposed
`construction
`Web server, such as a web
`page, a complete web site, a
`web-enabled database, or an
`applet.
`
`
`
`
`An application is software written to perform a particular function for a user -- as
`
`opposed to system software, which is designed to operate the network. Nothing in the ordinary
`
`meaning of “application,” nor any other language in the asserted claims of the ’578, ’293, or
`
`’766 patents, if given its ordinary meaning, would rule out execution within the browser window.
`
`
`
`Dr. Shamos, in his declaration (¶ 50-53) testifies that no portion of the ’578 patent
`
`contains, or otherwise supports, a construction of claim 1 of the’578 patent that would exclude
`
`an application that executes within the browser window. In fact, he cited a passage from the
`
`specification (8:7-20) of that patent that describes an exemplary situation in which the
`
`application is literally executed within the browser window:
`
`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.
`
`Dr. Shamos testifies:
`
`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
`
`
`
`12
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`

`

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`
` #:224
`
`able to support webpages containing Java applets. Thus, the construction of
`claim 1 would not read on this embodiment.
`
`A construction that would result in no claim reading on a preferred embodiment is highly
`
`suspect. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342-43 (Fed. Cir. 2001).
`
`
`
`The Opinion, however, had adopted a construction that included “does not execute within
`
`the browser window,” seemingly across all four patents. The sole basis for that was that the
`
`patentees of the ’466 patent, during the prosecution history of the ’466 patent, argued “an
`
`instance of the application program … executes locally at the client as a separate application
`
`from the browser interface [and] would not execute within the browser window.” Opinion at 20.
`
`
`
`Uniloc does not object to that construction, as applied to the ’466 patent. To begin with,
`
`the statements on which the Court relied were made during the prosecution of that patent.
`
`Further, the statements reasonably describe the invention of the claims of the ’466 patent. The
`
`claims of that patent literally require “providing an instance of the … application… to the client
`
`for execution,” seemingly ruling out executing remotely within the browser window.
`
`
`
`But a POSITA would not understand the statements as applying to the inventions claimed
`
`in the other three patents, as those claims omit any such requirements. Legal issues aside, the
`
`statements would make no sense, if they had appeared in the prosecution history of the other
`
`patents.
`
`
`
`As Dr. Shamos testified, the claims of the ’578 patent do not specify where applications
`
`are executed, and the specification of that patent includes an embodiment that literally executes
`
`within the browser window. Similarly, the claims of the ’293 patent do not relate at all to where
`
`or how applications are executed, but only to transmitting applications from a network
`
`management server to an intermediate server.
`
`
`
`13
`
`

`

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`
` #:225
`
`
`
`In any event, for the reasons described above, under Abbott Laboratories, statements in
`
`the ’466 prosecution history cannot be considered at all in construing the ’578 or ’766 patents.
`
`As to the ’293 patent, the statements, apart from not being relevant to