Case 5:18-md-02834-BLF Document 406-5 Filed 04/12/19 Page 1 of 37
`Case 5:18—md-02834-BLF Document 406-5 Filed 04/12/19 Page 1 of 37
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 6:12-cv-00661-JRG Document 103 Filed 03/11/16 Page 1 of 36 PageID #: 3016Case 5:18-md-02834-BLF Document 406-5 Filed 04/12/19 Page 2 of 37
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`MEMORANDUM OPINION AND ORDER
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`
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`Before the Court are Plaintiff PersonalWeb Technologies, LLC’s Opening Claim
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`Construction Brief (Dkt. No. 85), Defendants’ response (Dkt. No. 90), and Plaintiff’s reply (Dkt.
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`No. 94).
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`The Court held a claim construction hearing on March 7, 2016.
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`
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` CASE NO. 6:12-CV-661-JRG
` (LEAD CASE)
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` CASE NO. 6:12-CV-659-JRG
` (CONSOLIDATED CASE)
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`§§§§§§§§§§§§§§§§§§§§§§§
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`
`PERSONALWEB TECHNOLOGIES, LLC,
`et al.,
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`
`
`v.
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`INTERNATIONAL BUSINESS
`MACHINES CORPORATION,
`
`Defendant.
`
`
`___________________________________
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`PERSONALWEB TECHNOLOGIES, LLC,
`et al.,
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`
`
`v.
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`RACKSPACE US, INC., et al.,
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`
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`
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`
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`Plaintiffs,
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`
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`Plaintiffs,
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`Defendants.
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 3 
`II. LEGAL PRINCIPLES ........................................................................................................... 4 
`III. CONSTRUCTION OF AGREED TERMS ........................................................................ 8 
`IV. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9 
`A. “data item” ............................................................................................................................ 9 
`B. “given function of the data [in the data item / data file]” and “applying a function to the
`contents of the corresponding file” ..................................................................................... 15 
`C. “licensed” and “unlicensed” ................................................................................................ 21 
`D. “authorized,” “unauthorized,” “authorization” ................................................................... 25 
`E. “file name” .......................................................................................................................... 29 
`F. “substantially unique value” ................................................................................................ 34 
`V. CONCLUSION...................................................................................................................... 35 
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`2
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`I. BACKGROUND
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`
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`Plaintiff brings suit alleging infringement of United States Patents No. 6,415,280 (“the
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`’280 Patent”), 6,928,442 (“the ’442 Patent”), 7,802,310 (“the ’310 Patent”), and 8,099,420 (“the
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`’420 Patent”) (collectively, “the patents-in-suit”). (Dkt. No. 85, Exs. A-D.) The remaining
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`Defendants are International Business Machines Corporation and GitHub, Inc.
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`
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`The patents-in-suit are related to United States Patent No. 5,978,791 (“the ’791 Patent”)
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`(id., Ex. E), which is no longer asserted in the present case. The parties submit that “[a]lthough
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`the ’791 patent is no longer asserted, the parties cite to the ’791 patent because its specification is
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`identical to the specifications of the asserted patents and because the Court cited to the ’791
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`patent specification when previously construing terms from the asserted patents.” (Dkt. No. 78,
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`Ex. B at 1.)
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`
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`The ’791 Patent, titled “Data Processing System Using Substantially Unique Identifiers to
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`Identify Data Items, Whereby Identical Data Items Have the Same Identifiers,” issued on
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`November 2, 1999, and bears an earliest priority date of April 11, 1995. The Abstract states:
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`In a data processing system, a mechanism identifies data items by substantially
`unique identifiers which depend on all of the data in the data items and only on
`the data in the data items. The system also determines whether a particular data
`item is present in the database by examining the identifiers of the plurality of data
`items.
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`The Court previously construed
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`the patents-in-suit
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`in PersonalWeb
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`
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`terms
`
`in
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`Technologies, LLC v. NEC Corp., et al., No. 6:11-CV-655, Dkt. No. 103 (E.D. Tex. Aug. 5,
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`2013) (Davis, J.) (“PersonalWeb I”) (attached to Plaintiff’s opening brief, Dkt. No. 85, at Ex. F),
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`and that action also included Civil Actions No. 6:11-CV-656, -657, -658, -660, -683, and
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`6:12-CV-658, -660, -662.
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`3
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`II. LEGAL PRINCIPLES
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`
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right
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`which the patent confers on the patentee to exclude others from making, using or selling the
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`protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
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`Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
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`(1996).
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`
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of
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`dictionary, which explains the invention and may define terms used in the claims. Id. “One
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`purpose for examining the specification is to determine if the patentee has limited the scope of
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`the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
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`lexicographer, but any special definition given to a word must be clearly set forth in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`Although the specification may indicate that certain embodiments are preferred, particular
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`embodiments appearing in the specification will not be read into the claims when the claim
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`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
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`Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
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`used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
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`customary meaning of a claim term “is the meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
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`of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
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`recognition that inventors are usually persons who are skilled in the field of the invention and
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`that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
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`
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
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`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
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`being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
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`long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
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`portions of the specification to aid in solving the doubt or in ascertaining the true intent and
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`meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
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`addressing the role of the specification, the Phillips court quoted with approval its earlier
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`observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
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`1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
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`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
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`specification plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the
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`applicant,” it may lack the clarity of the specification and thus be less useful in claim
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`construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
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`relevant to the determination of how the inventor understood the invention and whether the
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`inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
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`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a
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`patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant
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`to claim interpretation”).
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`
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The
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`court did not impose any particular sequence of steps for a court to follow when it considers
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`disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
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`appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
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`bearing in mind the general rule that the claims measure the scope of the patent grant.
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`
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`In general, prior claim construction proceedings involving the same patents-in-suit are
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`“entitled to reasoned deference under the broad principals of stare decisis and the goals
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`articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
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`per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
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`at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Inuit Inc., No. 2:12-
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`CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
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`constructions in cases involving the same patent are entitled to substantial weight, and the Court
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`has determined that it will not depart from those constructions absent a strong reason for doing
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`so.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839-40 (2015) (“prior
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`cases will sometimes be binding because of issue preclusion and sometimes will serve as
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`persuasive authority”) (citation omitted); Markman, 517 U.S. at 390 (“[W]e see the importance of
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`uniformity in the treatment of a given patent as an independent reason to allocate all issues of claim
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`construction to the court.”).
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`
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`The Court nonetheless conducts an independent evaluation during claim construction
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`proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
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`589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F.
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`Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11-
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`CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
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`III. CONSTRUCTION OF AGREED TERMS
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`
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`The Court hereby adopts the following agreed constructions:
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`Term
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`“data identifier”
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`(’280 Patent, Claim 1)
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`“data file”
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`(’280 Patent, Claim 1;
`’442 Patent, Claims 1, 2, 4, 7, 23, 30)
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`“content-based name”
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`(’310 Patent, Claims 1, 8, 11, 18)
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`“digital identifier”
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`(’420 Patent, Claim 166)
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`Agreed Construction
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`“an identity for a data item generated by processing
`all of the data in the data item, and only the data in
`the data item, through an algorithm that makes the
`identifier substantially unique”
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`“a named data item(s)”
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`“an identity for a data item generated by processing
`all of the data in the data item, and only the data in
`the data item, through an algorithm that makes the
`identifier substantially unique”
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`“an identity for a data item generated by processing
`all of the data in the data item, and only the data in
`the data item, through an algorithm that makes the
`identifier substantially unique”
`
`
`
`(Dkt. No. 78, Nov. 18, 2015 Joint Claim Construction and Prehearing Statement, at Ex. A; Dkt.
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`No. 98, Feb. 24, 2016 Joint Claim Construction Chart, at Ex. A.)
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`8
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`A. “data item”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“sequence of bits”
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`“a sequence of bits distinct from contextual
`information”
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`(Dkt. No. 78, Ex. B, at 1; Dkt. No. 85, at 2; Dkt. No. 90, at 2; Dkt. No. 94, at 1; see Dkt. No. 98,
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`at Ex. A.) The parties have submitted that this term appears in Claim 1 of the ’280 Patent,
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`Claims 1, 2, 7, 8, 10, 11, 14, and 16-19 of the ’310 Patent, and Claim 166 of the ’420 Patent.
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`(Dkt. No. 78, Ex. B, at 1.)
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`
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`The Court previously construed this term to mean “sequence of bits.” See PersonalWeb I
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`at 8-10.
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`(1) The Parties’ Positions
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`Plaintiff argues that its proposed construction “is the definition provided by the
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`specification.” (Dkt. No. 85, at 2 (citing ’791 Patent at 1:54-60).) Plaintiff also urges that
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`Defendants’ proposal should be rejected because “the specification refers to ‘context’ when
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`discussing naming or identifying ‘data items,’ and not in relation to the ‘data item’ itself.” (Dkt.
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`No. 85, at 4.) “Finally,” Plaintiff argues, “there is nothing in the specification or claims that
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`precludes so-called ‘contextual information’ from being a ‘data item’ itself.” (Id., at 5.)
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`
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`Defendants respond that “a patentee’s attempt to act as his own lexicographer cannot be
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`read in a vacuum.” (Dkt. No. 90, at 5.) Defendants urge that “[t]hroughout the specifications’
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`disclosure of each embodiment, ‘context’ is always distinguished from the ‘data’ in a ‘data
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`item.’” (Id., at 3.) Defendants also cite arguments made by Plaintiff during prosecution as well
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`as in Inter Partes Review (“IPR”) proceedings. (Id., at 3-4.) Defendants conclude:
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`No one disputes that data is comprised of bits. The critical distinction the
`specification makes, and that [Plaintiff] now ignores, is that only certain bits
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`(content) make up a “data item” while other bits (context) are expressly left out.
`A construction of “sequence of bits” would entirely gloss over this key point.
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`(Id., at 5.) Further, Defendants submit that in PersonalWeb I, “no party raised the issue of
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`whether contextual information may be part of a ‘data item,’” and PersonalWeb I was decided
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`prior to Plaintiff’s statements in the IPR proceedings. (Id., at 6.) Finally, Defendants argue that
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`Plaintiff’s proposed interpretation “would also read out preferred embodiments.” (Id., at 7.)
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`
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`Plaintiff replies by reiterating that the patentee’s lexicography should govern, and
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`Plaintiff urges that “[t]he Court’s prior construction of the same term is entitled to substantial
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`deference.” (Dkt. No. 94, at 1.) Plaintiff also argues that “how the invention identifies ‘data
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`items’ has nothing to do with what ‘data items’ are.” (Id., at 2.) Plaintiff explains that “just
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`because a True Name can identify a data item independent of its contextual information does not
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`mean that the data item itself must exclude (or be distinct from) contextual information—the
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`entire point of the invention is that any bits can make up the data item and its True Name alone
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`can identify it.” (Id.) Further, Plaintiff argues that the Defendants’ citations to Plaintiff’s IPR
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`arguments are misleading and incomplete. (See id., at 2-3.)
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`
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`(2) Analysis
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`Claim 1 of the ’310 Patent, for example, recites (emphasis added):
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`1. A computer-implemented method in a system which includes a network of
`computers, the method implemented at least in part by hardware comprising at
`least one processor, the method comprising the steps:
`
`(a) at a first computer, obtaining a content-based name for a particular
`data item from a second computer distinct from the first computer, the content-
`based name being based at least in part on a function of at least some of the data
`which comprise the contents of the particular data item, wherein the function
`comprises a message digest function or a hash function, and wherein two identical
`data items will have the same content-based name; and
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`(b) by hardware in combination with software, a processor at said first
`computer ascertaining whether or not the content-based name for the particular
`data item corresponds to an entry in a database comprising a plurality of
`identifiers; and
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`(c) based at least in part on said ascertaining in (b), determining whether
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`or not access to the particular data item is authorized.
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`The specification discloses:
`
`In general, the terms “data” and “data item” as used herein refer to sequences of
`bits. Thus a data item may be the contents of a file, a portion of a file, a page in
`memory, an object in an object-oriented program, a digital message, a digital
`scanned image, a part of a video or audio signal, or any other entity which can be
`represented by a sequence of bits. The term “data processing” herein refers to the
`processing of data items, and is sometimes dependent on the type of data item
`being processed. For example, a data processor for a digital image may differ
`from a data processor for an audio signal.
`
`In all of the prior data processing systems the names or identifiers provided to
`identify data items (the data items being files, directories, records in the database,
`objects in object-oriented programming, locations in memory or on a physical
`device, or the like) are always defined relative to a specific context. For instance,
`the file identified by a particular file name can only be determined when the
`directory containing the file (the context) is known. The file identified by a
`pathname can be determined only when the file system (context) is known.
`Similarly, the addresses in a process address space, the keys in a database table, or
`domain names on a global computer network such as the Internet are meaningful
`only because they are specified relative to a context.
`
`’791 Patent at 1:54-2:11 (emphasis added); see id. at 3:15-20 (“without relying on any context
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`information or properties of the data item”) & 3:30-35 (“identity of the data item depends on all
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`of the data in the data item and only on the data in the data item” and “is independent of its
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`name, origin, location, address, or other information not derivable directly from the data, and
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`depends only on the data itself”); see also id. at 35:34-37.
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`
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`“When a patentee explicitly defines a claim term in the patent specification, the
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`patentee’s definition controls.” Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363,
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`1380 (Fed. Cir. 2009) (citing Phillips, 415 F.3d at 1321); see Intellicall, 952 F.2d at 1388; see
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`also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“Although
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`words in a claim are generally given their ordinary and customary meaning, a patentee may
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`choose to be his own lexicographer and use terms in a manner other than their ordinary meaning,
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`as long as the special definition of the term is clearly stated in the patent specification or file
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`history.”).
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`
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`The Court in PersonalWeb I found that “[t]he specification plainly and unambiguously
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`states that a data item is a sequence of bits.” PersonalWeb I at 9.
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`
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`After PersonalWeb I, during a final hearing in IPR proceedings involving the ’791 Patent
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`and the ’280 Patent, Plaintiff argued:
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`[Counsel]: The content of the data item are whatever is in the data item, whatever
`bits make up the data item, that’s the contents of the data item.
`
`
`JUDGE CHANG: But he does say independent of the name, date and properties
`of the data item. So --
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`[Counsel]: That’s because those things are not part of the data item. In the file
`that ’791 was talking about, these patents, those things are not part of the data.
`
`(Dkt. No. 90, Ex. 2, Apr. 15, 2014 Record of Oral Hearing, at 117:19-118:4; see id. at 115:7-15
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`(“[I]n the ’791 patent they are talking about typical files where this metadata is not part of the
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`file. It’s not part of the data item.”).)
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`
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`Likewise, during prosecution of the ’791 Patent, the patentee stated:
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`This invention relates to data processing systems and, more particularly, to data
`processing systems wherein data items are identified by substantially unique
`identifiers which depend on all of the data in the data items and only on the data
`in the data items.
`
`(Dkt. No. 90, Ex. 3, Mar. 12, 1997 Amendment Under 37 C.F.R. 1.115, at 10-11
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`(PWEB 000737-38) (original bold shown as italics; original underlining and double-underlining
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`omitted).)
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`These arguments by the patentee are consistent with the above-quoted disclosures in the
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`specification as well as others. (See Dkt. No. 90, at 5 (citing ’791 Patent at 1:65-3:35, 8:19-34,
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`14:40-50, 28:46-49, 31:58-63, 32:49-33:47, 35:29-37, & 38:33-40).)
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`At first blush, the patentee has thus appeared to limit the scope of “data item” in the
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`manner proposed here by Defendants. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d
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`1187, 1203 (Fed. Cir. 2013) (“[T]he patentees in this case have, without express redefinition,
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`disclaimed a potential embodiment from the ordinary scope of a claim term through clear,
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`repeated, and consistent statements in the specification that describe how culturing with beads is
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`different and distinct from culturing in three-dimensions.”).
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`The specification demonstrates, however, that there is a distinction between data about
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`data items and data within data items, and this distinction is consistent with the above-quoted
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`statements made during prosecution and in the IPR final hearing:
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`In operation, data items (for example, files, database records, messages, data
`segments, data blocks, directories, instances of object classes, and the like) in a
`DP [(data processing)] system employing the present invention are identified by
`substantially unique identifiers (True Names), the identifiers depending on all of
`the data in the data items and only on the data in the data items.
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`’791 Patent at 32:54-60 (emphasis added). These references to “data in the data items” implies
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`that a “data item” can consist of more than merely the data within it. This disclosure also
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`suggests that a “data item” can itself be contextual information, such as in the example of data
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`items being “directories.” See id.
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`
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`Further, Defendants’ argument that a “data item” cannot include contextual information
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`is analogous to arguing that an “e-mail,” for example, consists of only the text that was typed by
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`the sender and does not include any of the other information that may be necessary for proper
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`transmission of the e-mail.
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`Because the specification, as quoted above, refers to “data in the data items,” a fair
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`reading of the specification as a whole is that a “data item” may encompass more than its data
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`contents. Likewise, in the IPR proceedings quoted above, Plaintiff’s counsel referred to the
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`“contents of the data item.” (Dkt. No. 90, Ex. 2, Apr. 15, 2014 Record of Oral Hearing,
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`at 117:19-118:4; see Dkt. No. 90, Ex. 3, Mar. 12, 1997 Amendment Under 37 C.F.R. 1.115, at 22
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`(PWEB 000749) (“a data item A-1 is given a name (true name) A-2 by passing the data item
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`through a function MD, where MD uses all of the data in data item A-1 and only the data in data
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`item A-1 to determine the name A-2”) (emphasis added); see also id., at 10-11 (PWEB 000737-
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`38) (quoted above).)
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`Based on the intrinsic record as a whole, the Court rejects Defendants’ disclaimer
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`arguments. See Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a
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`basic principle of claim interpretation, prosecution disclaimer promotes the public notice
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`function of the intrinsic evidence and protects the public’s reliance on definitive statements made
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`during prosecution.”) (emphasis added); see also id. at 1325-26 (“[F]or prosecution disclaimer to
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`attach, our precedent requires that the alleged disavowing actions or statements made during
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`prosecution be both clear and unmistakable”) (emphasis added); Golight, Inc. v. Wal-Mart
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`Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) (“Because the statements in the prosecution
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`history are subject to multiple reasonable interpretations, they do not constitute a clear and
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`unmistakable departure from the ordinary meaning of the term . . . .”).
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`The Court therefore hereby expressly rejects Defendants’ proposed construction. This
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`finding is consistent PersonalWeb I and the above-discussed intrinsic evidence as well as with
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`the construction of the term “data item” in IPR proceedings as to the ’791 Patent. (See Dkt.
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`No. 94, Ex. 1, May 17, 2013 Decision, at 15 (construing “data item” to mean “sequence of bits”);
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`see also id., Ex. 2, May 15, 2014 Final Written Decision, at 6.)
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`
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`The Court accordingly hereby construes “data item” to mean “sequence of bits.”
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`B. “given function of the data [in the data item / data file]” and “applying a function to the
`contents of the corresponding file”
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`
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`“given function of the data [in the data item / data file]”
`(’280 Patent, Claim 1; ’442 Patent, Claims 1, 7)
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`Plain and ordinary. No construction necessary. “computation where the input is all of the data
`in the [data file / data item], and only the data
`in the [data file / data item]”
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`
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`“applying a function to the contents of the corresponding file”
`(’442 Patent, Claim 23)
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`Plaintiff’s Proposed Construction
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`Plain and ordinary. No construction necessary.
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`Defendants’ Proposed Construction
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`“performing a computation where the input is
`all of the data in the file, and only the data in
`the file”
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`
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`(Dkt. No. 78, Ex. B, at 2 & 5-6; Dkt. No. 85, at 5; Dkt. No. 90, at 10; Dkt. No. 94, at 5; see Dkt.
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`No. 98, at Ex. A.)
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`These terms were not addressed in PersonalWeb I.
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`(1) The Parties’ Positions
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`Plaintiff argues that “the surrounding claim language of the phrases at issue makes them
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`entirely unambiguous.” (Dkt. No. 85, at 5.) Plaintiff also urges that Defendants’ proposed
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`constructions should be rejected because, in Claim 1 of the ’280 Patent, “[t]he claim language
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`. . . involving the data used by the given function may include ‘contents of the particular data,’
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`but may not necessarily be limited to only ‘contents of the particular data’ because the patentee’s
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`use of ‘comprises’ results in an open-ended limitation.” (Id., at 6.) Likewise, Plaintiff submits
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`that Claim 23 of the ’442 Patent uses the phrase “at least in part.” (Id.) Further, Plaintiff argues
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`that Defendants’ proposals of “computation” and “input” “introduce[] ambiguity to otherwise
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`unambiguous claim language.” (Id.)
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`
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`Defendants respond by citing the parties’ agreed-upon construction for “data identifier”
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`and by reasoning that “[a]s the ‘given function’ determines the data identifier, the claim itself
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`requires the ‘given function’ to operate on all of the data in the data item and only the data in the
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`data item.” (Dkt. No. 90, at 11.) Defendants also argue that “[t]he words ‘computation’ and
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`‘input’ are more readily understood to a juror than the con