Case 1:17-cv-02097-RBJ Document 132 Filed 10/24/18 USDC Colorado Page 1 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`
`REALTIME ADAPTIVE STREAMING
`LLC,
`
`
`
`
`
`SLING TV L.L.C.,
`SLING MEDIA L.L.C.,
`DISH TECHNOLOGIES L.L.C.,
`DISH NETWORK L.L.C., AND
`ARRIS SOLUTIONS, INC.,
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`
`Case No. 1:17-cv-02097-RBJ
`
`
`
`
`
`
`
`
`Defendants.
`
`PLAINTIFF REALTIME ADAPTIVE STREAMING LLC’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
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`
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` i
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`

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`Case 1:17-cv-02097-RBJ Document 132 Filed 10/24/18 USDC Colorado Page 2 of 33
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`
`
`TABLE OF CONTENTS
`
`Page(s)
`INTRODUCTION .....................................................................................................3
`I.
`II. BACKGROUND OF THE PATENTS-IN-SUIT .........................................................3
`III. CLAIM CONSTRUCTION PRINCIPLES ..................................................................5
`IV. DISPUTED TERMS .................................................................................................6
`A. access profile (’535 Pat., Cl. 1 and 14) ............................................................6
`B.
`“throughput of a communication channel” (’610 Pat., Cl. 1, 9, 12-14) ..............8
`C.
`“asymmetric compressor(s)” (’535 Pat., Cl. 12, 15, 16, 24) / “asymmetric data
`compression” (’535 Pat., Cl. 1, 10) / “asymmetric compression algorithm” /
`“compression algorithms being asymmetric” (’610 Pat., Cl. 1, 9) /
`“asymmetric” (’610 Pat., Cl. 6, 16) .................................................................12
`“compressor” (’535 Pat., Cl. 1, 8, 10, 12, 14-16) ............................................18
`“compressing / compressed / compression” (’610 Pat., Cl. 1, 2, 6, 8-14, 16,
`18; ’535 Pat., Cl. 1, 2, 4-6, 8, 10-12, 14-17, 19, 21, 22) .................................24
`“algorithm” (’610 Pat., Cl. 1, 6, 9, 12-14, 16)..................................................26
`F.
`“the determined parameter or attribute” (’535 Pat., Cl. 15) ............................27
`G.
`“file” (’535 Pat., Cl. 3, 4, and 11) ....................................................................28
`H.
`I. “data block” (’610 Pat., Cl. 1, 2, 8-14, 18; ’535 Pat., Cl. 1, 2-6, 8-12, 14-17, 19,
`21, 22, 24) .....................................................................................................29
`V. CONCLUSION .......................................................................................................32
`
`D.
`E.
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`I.
`
`INTRODUCTION
`Realtime and Defendants offer not just competing proposals, but different
`approaches to claim construction. The Federal Circuit has set forth straightforward rules
`to guide claim construction. For example, where claim terms have a plain and ordinary
`meaning in the field, that meaning almost always controls. Further, where claim term
`does not recite “means” language, the term is presumptively not means-plus-function.
`Realtime’s proposals follow Federal Circuit precedent.
`
`Defendants’ proposals, on the other hand, reflect an erroneous approach to claim
`construction. Defendants ask this Court to recharacterize and burden clear terms with
`artificial and extraneous baggage, but cannot point to any requisite clear and
`unmistakable disclaimer. This invites reversible error. Worse, their proposals are
`inconsistent with—and even exclude—embodiments taught in the patent specification.
`In so doing, Defendants even flatly contradict legal and factual positions they have
`recently taken before the PTAB on the same term. Unable to justify their extraneous
`limitations, Defendants also
`resort
`to
`flawed means-plus-function arguments.
`Defendants attempt to import limitations by casting structure-connoting term as means-
`plus-function. But none of claims recite “means” or use nonce words. The Court should
`reject Defendant’s proposed constructions and adopt Realtime’s proposals.
`BACKGROUND OF THE PATENTS-IN-SUIT
`II.
`The asserted patents1 teach improved, particularized digital data compression
`systems and methods to address problems specific to digital data. For instance, the
`patents state that they deal with limitations and problems arising in the realm of
`compressing “[d]iffuse digital data” which is “a representation of data that … is typically
`
`1 The two asserted patents—the ‘535 and ‘610 patents—are related and have
`substantially the same specification. Thus, the citations to the ‘535 patent are applicable
`to the ‘610 patent, and vice versa.
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`not easily recognizable to humans in its native form.” ‘535 patent at 2:28-30.2
`The asserted patents are directed to systems and methods of digital data
`compression utilizing multiple data compression encoders
`(e.g., asymmetric
`compressors) to compress data based on a parameter relating to, e.g., throughput
`(bandwidth) of a communication channel. ‘535 patent at Abstract, 1:21-29. The patents
`address specific problems in the field of compressing, storing, and transmitting digital
`data, including: the “compromise between efficient data storage, access speed, and
`addressable data space”; “file systems [that] are not able to randomly access
`compressed data in an efficient manner”; “substantial disk fragmentation and slower
`access
`times”;
`issues regarding “knowledge of … algorithmic efficiency”; and
`“[c]ompeting requirements of data access bandwidth, data reliability/redundancy, and
`efficiency of storage space.” Id. at 5:5-10; 6:31-7:45.
`
`The patents solved these technological problems and others with a novel
`technological solution in digital data compression utilizing combination of (1) asymmetric
`compressors, (2) two or more compressors, (3) selecting compressor based on
`parameter such as throughput of a communication channel, and/or (4) access profile.
`The patents explain that “access profiles comprise information that enables the
`controller to select a suitable compression algorithm that provides a desired balance
`between execution speed (rate of compression) and efficiency (compression ratio)” (id.
`at 8:8-13), and state that an access profile may comprise data type information alone
`(id. at 11:35-38). The patents describe that “the overall throughput (bandwidth) … is one
`factor considered by the controller 11 in deciding whether to use an asymmetrical or
`symmetrical compression” (id. at 11:25-29), and consistently uses the term “throughput”
`to be data rate or usage of a system. E.g., id. at 7:51-55. The patents also recognized
`
`2 All emphasis in quotes are added unless otherwise stated.
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`that “utiliz[ing] an asymmetrical algorithm … [may] provide an increase in the overall
`system performance” (id. at 12:14-20), whereby an “asymmetric” is precisely described
`to be compression algorithm “in which the execution time for the compression and
`decompression routines differ significantly.” Id. at 9:63-66.
`III. CLAIM CONSTRUCTION PRINCIPLES
`Claim construction is a matter of law for the Court. Markman v. Westview
`Instruments, Inc., 517 U.S. 370, 384-91 (1996). The Federal Circuit “indulge[s] a heavy
`presumption that claim terms carry their full ordinary and customary meaning[.]”
`Omega Eng,g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “There are
`only two exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full scope of a
`claim term either in the specification or during prosecution.” Thorner v. Sony Computer
`Entm’t Am. LLC, 669 F.3d 1362, 1367–68 (Fed. Cir. 2012).
`“[T]he claim construction inquiry … begins and ends in all cases with the actual
`words of the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248
`(Fed. Cir. 1998). Although claims are read in light of the specification, descriptions from
`the specifications may not be imported into the claims. Comark Commc’ns, Inc. v. Harris
`Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998). A court also may look to other,
`extrinsic sources to show “what a person of skill in the art would have understood
`disputed claim language to mean.” Innova/Pure Water, Inc. v. Safari Water Filtration
`Sys. Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004); see also Teva Pharms. USA v.
`Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (courts can consult extrinsic evidence and find
`facts necessary “to understand, for example, the background science or the meaning of
`a term in the relevant arty during the relevant time period.”). These sources include
`evidence such as expert testimony or dictionaries “concerning relevant scientific
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`1.
`
`principles, the meaning of technical terms, and the state of the art.” Innova/Pure, 381
`F.3d at 1116.
`IV. DISPUTED TERMS
`A.
`access profile (’535 Pat., Cl. 1 and 14)
`Realtime’s Proposed Construction
`Defendants’ Proposed Construction
`No construction necessary.
`“profile containing information about the
`number or frequency of reads and
`writes”3
`As four of the five defendants agree, this term needs no
`construction.
`The Federal Circuit has instructed that claim construction is “not an obligatory
`exercise in redundancy.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
`Cir. 1997). Where a term is used in accordance with its plain meaning, the court should
`not re-characterize it using different language. See Mentor H/S, Inc. v. Med. Device
`Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001) (“[T]he court properly instructed the
`jury that these terms should receive their ordinary meanings.”).
`This is the precise situation where a “disputed” term should not be re-
`characterized. In fact, four of the five defendants agree with Realtime on this point. Sling
`TV, Sling Media, Dish Technologies, and Dish Network agree that no construction is
`appropriate for this term. E.g., Br. at 2, n. 2.
`A review of the intrinsic record shows why most parties agree on this point.
`“Access profile” need not be construed because it alone is the best term to understand
`the claims, particularly in view of the specification. The patent explains that the access
`profile “comprise information that enables the controller to select a suitable compression
`algorithm
`that provides a desired balance between execution speed (rate of
`
`
`3 Defendants have indicated that the DISH and Sling entities do not seek a construction
`for this term.
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`compression) and efficiency (compression ratio).” ‘535 patent at 8:8-13; Zeger Decl.
`¶14. For example, the data access “profiles may comprise a map that associates
`different data types (based on, e.g., a file extension) with preferred one(s) of the
`compression algorithms 13.” Id.; ‘535 patent at 11:35-38.
`Arris’s incorrect construction strays from the ordinary
`2.
`meaning and excludes preferred embodiments.
`In construing claims, the Federal Circuit “indulge[s] a heavy presumption that
`claim terms carry their full ordinary and customary meaning[.]” Omega, 334 F.3d at
`1323. “There are only two exceptions to this general rule: 1) when a patentee sets out a
`definition and acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.” Thorner, 669
`F.3d at 1367–68. In both of these exceptions, the patentee’s intent to depart from the
`plain and ordinary meaning must be clear and unmistakable. Id.
`Arris, the sole Defendant that seeks a construction of the term “access profile,”
`proposes one that is far narrower than the scope of the plain and ordinary meaning of
`the term in light of the specification. But it points to no clear lexicography or disavowal.
`To the contrary, Arris’s proposal is inconsistent with the express teaching, which makes
`clear the term is not limited to the number or frequency of reads and writes, but instead
`can “comprise information that enables the controller to select a suitable compression
`algorithm
`that provides a desired balance between execution speed (rate of
`compression) and efficiency (compression ratio).” ‘535 patent at 8:8-13; Zeger Decl.
`¶14.
`
`Arris’s proposal does not even attempt to construe the term “profile” in “access
`profile.” Indeed, its improperly narrow construction includes that claim term in it. Instead,
`it seeks to import twelve words in place of the clear phrase “access”: “a profile
`containing information about the number or frequency of reads and writes.” Br. at 2. In
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`support of this construction, however, Arris points to only one embodiment described in
`the patent specification, which it contends shows “information about the number or
`frequency of reads and writes.” Id. at 2-3.
`Adopting Arris’s proposal would result in two legal errors. First, even assuming
`Arris’s interpretation of Table 2 is correct, importing “information about the number or
`frequency of reads and writes” into the claim itself would violate established Federal
`Circuit precedent, which makes clear that limitations from the specifications must not be
`imported into the claims, absent clear and unmistakable disclaimer. Thorner, 669 F.3d
`at 1365-67. Second, Arris’s proposal actually excludes embodiments from the scope of
`the claims. Such constructions are “rarely, if ever, correct.” SanDisk Corp. v. Memorex
`Prod., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005). Here, Arris’s proposal would exclude
`the patent’s express teaching that the access profile may comprise data type
`information alone. ‘535 patent at 11:35-38 (“profiles may comprise a map that
`associates different data types (based on, e.g., a file extension) with preferred one(s) of
`the compression algorithms 13.”); Zeger Decl. ¶14. Arris’s proposal must be rejected.
`B.
`“throughput of a communication channel” (’610 Pat., Cl. 1, 9,
`12-14)
`Realtime’s Proposed Construction
`No construction necessary
`
`Defendants’ Proposed Construction
`“number of pending transmission requests
`over a communication channel”
`The term “throughput” is an ordinary word that does not need construction. Zeger
`
`Decl. ¶15. A “throughput” of a communication channel simply means data rate or usage
`of a communication channel. Id. The claims and specifications use the term in its
`ordinary sense. See, e.g., ‘535 patent at Abstract (“actual or expected throughput
`(bandwidth) … a bottleneck occurs so as to increase the throughput and eliminate the
`bottleneck”); 7:51-55 (“a system and method for compressing and decompressing
`based on the actual or expected throughput (bandwidth) of a system employing data
`
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`compression and a technique of optimizing based upon planned, expected, predicted,
`or actual usage.”); 12:28-35 (“an overall faster (higher throughput) and efficient (higher
`compression ratio) system performance”); 13:62-65 (“If the throughput of the system is
`not meeting the desired threshold (e.g., the compression system cannot maintain the
`required or requested data rates)”).
`
`Defendants do not dispute that the language “communication channel” requires
`construction, as they include it verbatim in their proposed construction. But Defendants
`propose to substitute the claim language “throughput” with their proposal “number of
`pending transmission requests.” But that is not the plain and ordinary meaning of the
`term “throughput.” Zeger Decl. ¶16. The patentee did not clearly re-define “throughput,”
`nor is there a clear and unmistakable disclaimer limiting the term “throughput” to
`Defendants’ proposal. See Thorner, 669 F.3d at 1365-67.
`
`As to the specification, Defendants point only to the ‘535 patent at 8:22-27, which
`states “[t]he system throughput tracked by the controller comprises a number of pending
`transmission requests over the communication channel.” This is neither (1) the patentee
`clearly acting as his own lexicographer, nor (2) clear and unmistakable disclaimer of
`claim scope. Indeed, the passage is expressly about an aspect of an embodiment of the
`invention. Courts, without clear and unmistakable disclaimer, “do not import limitations
`into claims from examples or embodiments appearing only in a patent’s written
`description, even when a specification describes very specific embodiments of the
`invention or even describes only a single embodiment.” JVW Enters. v. Interact
`Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005).
`
`Moreover, the specification also makes clear that tracking the number of pending
`requests is just one “example” to track throughput (data rate or usage). E.g., ‘535 patent
`at 13:57-62 (“During the process of compression and storing the compressed data, the
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`controller will track the throughput to determine whether the throughput is meeting a
`predetermined threshold (step 28). For example, the controller may track the number of
`pending disk accesses (access requests) to determine whether a bottleneck is
`occurring.”). Indeed, the number of pending requests in a system (e.g., communication
`channel) may indicate data rate or usage of the system, but there are other measures of
`data rate or usage. Zeger Decl. ¶16. There is no “clear and unmistakable disclaimer” in
`the specification limiting “throughput” to “number of pending transmission requests.”
`Thorner, 669 F.3d at 1366–67 (“To constitute disclaimer, there must be a clear and
`unmistakable disclaimer.”).4
`Defendants also point to prosecution history to argue that “throughput” should be
`limited. They are wrong. Like a statement in the specification, a claim term cannot be
`narrowed absent an act that is “both clear and unmistakable” disclaimer of claim scope.
`TecSec v. Int’l Bus. Machines Corp., 731 F.3d 1336, 1346 (Fed. Cir. 2013) (“[F]or
`prosecution disclaimer to attach, our precedent requires that the alleged disavowing
`actions or statements made during prosecution be both clear and unmistakable.”);
`Grober v. Mako Products, Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (“the doctrine of
`prosecution disclaimer only applies to unambiguous disavowals.”).5
`
`
`4 Defendants cite to Nystrom v. TREX Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005), but
`that case is inapposite. In Nystrom, “both parties acknowledge the ordinary meaning of
`‘board’ as ‘a piece of sawed lumber,’” and plaintiff there sought “to broaden the term
`‘board’ to encompass relatively obscure definitions that are not supported by the written
`description or prosecution history.” Id. Here, Realtime is not seeking to broaden the
`term at issue (throughput) to encompass some obscure definition, but rather seeks to
`maintain the plain meaning that is fully supported by the intrinsic evidence.
`5 See also, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)
`(“[B]ecause the prosecution history represents an ongoing negotiation between the PTO
`and the applicant, rather than the final product of that negotiation, it often lacks the
`clarity of the specification and thus is less useful for claim construction purposes.”).
`
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`Defendants do not identify any such clear and unmistakable disclaimer in the
`
`prosecution history. Indeed, the prosecution history they identify does not even mention
`Defendants’ language “number of pending transmission requests.” See Def.’s Ex. D
`(5/27/14 Amendment & Resp.). That is neither clear nor unmistakable disclaimer
`relating to Defendants’ proposal.
`
`Defendants also argue that “‘throughput’ cannot include ‘bandwidth.’” As an initial
`matter, Defendants do not explain how this relates to their proposed construction. The
`Court can and should reject Defendants’ argument for this reason alone. Regardless,
`Defendants’ argument also fails on the merits, as there was no clear and unmistakable
`disavowal of “bandwidth.” First, the patentee clearly stated that the claim was being
`amended “for the purpose of advancing prosecution of this Application” and was not
`“acquiescing to the merits” of the examiner’s written description argument. See Def.’s
`Ex. D (5/27/14 Amendment & Resp.) at 15. Second, the amendment during prosecution
`was not a simple replacement of “bandwidth” with “throughput,” as Defendants contend,
`but rather replacing “bandwidth of a transmission line or” with “throughput.” And third,
`the patentee cited numerous portions of the specification that indicate that “throughput”
`and “bandwidth” are similar concepts. See Def.’s Ex. D (5/27/14 Amendment & Resp.)
`at 16-17 (citing to specification portions that state “throughput (bandwidth)”). This is
`entirely inconsistent with Defendants’ argument that the patentee was disavowing
`“bandwidth” from the term “throughput.” Zeger Decl. ¶18. There is no clear and
`unmistakable disclaimer.6
`
`
`6 Defendants cite to Sterisil, Inc. v. ProEdge Dental Prod., Inc., No. 13-CV-01210-REB,
`2015 WL 13091166, at *10 (D. Colo. Aug. 7, 2015), but that case does not support
`them. The patentee in Sterisil amended the claim to add a limitation “whereby … kill
`existing biofilm” and also argued that “kill[ing] biofilm” was the very thing that was
`absent in prior art. Id. at *9 (quoting patentee statement: “there is no suggestion in
`[asserted prior art] DeSanto to use such purified water in dental units to kill biofilm and
`prevent its growth.”). Here, the patentee never stated that “throughput” excluded
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`Defendants’ argument regarding “bandwidth” also directly contradicts what they
`
`have represented to the PTAB in their petition for inter partes review of the ‘610 patent:
`“It was well-known … that the bandwidth of a communication channel is a
`throughput of the channel. DISH1003-¶¶97-102. Indeed, the ’610 Patent itself
`equates the throughput of a system with the bandwidth of the system.”
`Ex. 1 (Sling/DISH’s IPR Petition, IPR2018-01331, at 32). Indeed, Defendants’ expert
`(for their IPR petition) analyzed the file histories of the ‘610 patent and opined that
`“bandwidth of a communication channel is a throughput of the channel.” Ex. 2
`(Sling/DISH’s Expert Decl. re: IPR2018-01331 at ¶28 & ¶102) (“[¶] 28. … I have
`analyzed the following materials … the File History of the ‘610 Patent … [¶] 102. A
`POSITA at the relevant time would have understood that a transmission medium is a
`communication channel, and that a bandwidth of a communication channel is a
`throughput of the channel. The ’610 Patent acknowledges that bandwidth and
`throughput are synonymous.”). Defendants’ “bandwidth” argument fails.
`C.
`“asymmetric compressor(s)” (’535 Pat., Cl. 12, 15, 16, 24) /
`“asymmetric data compression” (’535 Pat., Cl. 1, 10)
`/
`“asymmetric
`compression
`algorithm”
`/
`“compression
`algorithms being asymmetric”
`(’610 Pat., Cl. 1, 9)
`/
`“asymmetric” (’610 Pat., Cl. 6, 16)
`Realtime’s Proposed Construction
`
`Not indefinite.
`
`If this Court were inclined to construe the
`term, is should be construed as “a
`compression algorithm in which the
`execution times for compression and
`decompression differ significantly.”
`
`Defendants’ Proposed
`Construction
`“a compression algorithm in which the
`execution time for compression and
`decompression differ significantly,”
`which renders the claims indefinite
`under Halliburton Energy Servs., Inc. v.
`M-I LLC, 514 F.3d 1244 (Fed. Cir.
`2008)
`
`
`“bandwidth.” Indeed, the patentee indicated that the two were similar/related concepts
`by citing to portions of the specification that indicated as much.
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`1.
`
`The patent provides the definition of the term “asymmetric”
`compression algorithm, and confirms that a POSITA would
`understand certain algorithms are always asymmetric or symmetric.
`As Defendants acknowledge, the patent provides a definition of the term
`“asymmetric” compression algorithm: “a compression algorithm in which the execution
`time for compression and decompression routines differ significantly.” ‘535 patent at
`9:63-66; Br. at 6. The patent’s definition comports with the manner in which a POSITA
`would understand and use the term—and defines it precisely. Zeger Decl. ¶19. Applying
`the patent’s definition, a POSITA would understand with reasonable certainty the
`bounds of the claims. Id.
`Nevertheless, the patent specification teaches more—and provides additional
`guidance on this term. It explains that compression algorithms are inherently either
`symmetric or asymmetric. ‘535 patent at 9:63-10:9; Zeger Decl. ¶20. In fact, it even
`states, as an example, that Lempel-Ziv is, by its very nature, asymmetric. ‘535 patent at
`10:2-4. On the other hand, due to its different inherent characteristics, the Huffman
`compression algorithm is symmetric. Id. at 10:8-9. The term “asymmetric” relates to
`examining the relative difference in the time it takes to perform the steps, and the time it
`takes an algorithm to perform its task is a fundamental property of the algorithm and
`does not significantly depend on external factors, such as hardware that is used. Zeger
`Decl. ¶20. This is one reason why certain algorithms are asymmetric, and other
`symmetric, regardless of the specific hardware or software used. Zeger Decl. ¶20.
`Defendants cannot meet their burden of showing that the claims are
`2.
`clear and convincingly indefinite in view of the facts here.
`a.
`Defendants’ indefiniteness position rests on pure
`attorney argument and false premises.
`Facing an insurmountable hurdle in light of the record here, Defendants rely on
`pure attorney argument. But that cannot be sufficient to meet their burden of coming
`
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`forward with evidence proving the patented inventions are clearly and convincingly
`indefinite. BASF Corp. v. Johnson Matthey, Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).
`Moreover, Defendants’ attorney argument is no less based on a false pretense,
`namely, that the claimed “comparison” requires “a separate infringement determination
`for every possible use or corresponding implementation of a device.” Br. at 6-7. With
`zero actual evidentiary support, Defendants even take this false premise one step
`further, in the wrong direction, and contend that this determination “would result in
`different infringement outcomes for the same product.” Id.
`This is demonstrably false. Per the patent specification, algorithms are either
`generally symmetric or asymmetric. ‘535 patent at 9:63-10:9; Zeger Decl. ¶20. Thus, no
`matter what hardware or firmware devices are used in a decoder, the accused
`asymmetric algorithms are always asymmetric. Id. Thus, the definition in the patent is
`far from indefinite. To the contrary, it defines the term with utmost precision—leaving no
`reasonable uncertainty to a POSITA on which algorithms are asymmetric. Id.
`b.
`Defendants’ argument flatly contradicts the contrary
`positions they have taken before the PTAB.
`Defendants’ attorney arguments are rendered all the more curious and meritless
`in light of their recent positions and representations before the PTAB. In IPRs filed on
`the asserted patents, Defendants and their expert had no problem applying the correct
`definition of the term and knowing precisely how and when the term asymmetric is
`present. Ex. 1 (Sling/DISH’s Petition in IPR2018-01331) at 15-16; Ex. 2 (Sling/DISH’s
`Expert Decl. re: IPR2018-01331) at ¶¶ 55, 68 (“video compression techniques utilized in
`the MPEG standards … are inherently asymmetric.”), 103-108 (“While Vishwanath
`does not specifically describe the Lempel-Ziv, MPEG1, MPEG2, and H.263 algorithms
`as ‘asymmetric,’ a POSITA reviewing Vishwanath would have understood that these
`compression algorithms are asymmetric.”), 116.
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`that various
`fact, Defendants—and Defendants’ expert—explained
`In
`compression algorithms are always asymmetric. Id. And flatly contradicting what they
`now tell this Court, this does not depend on the specific implementation or hardware
`used. This is fully consistent with the intrinsic record of the asserted patents, which
`teach the same facts, leaving little to no room for interpretation or “different outcomes”
`for the same algorithm.
`Defendants’ double-speak is contradicted by the understanding of a POSITA and
`also contradicted by the intrinsic record. It should be rejected on all grounds.
`c.
`Halliburton is inapposite—and Defendants’ reliance on it
`is misplaced.
`In a flawed attempt to provide legal support for their indefiniteness argument,
`Defendants argue that the facts in this case are just like those in Halliburton Energy
`Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008). This is false. In Halliburton, the
`Federal Circuit held that “fragile gel,” the only alleged claim limitation separating the
`claim from the prior art, was indefinite. But this holding was based on the fact that a
`POSITA would need the “formation geology, wellbore size, depth, angle” and other well
`characteristics, which vary from one well to the next, to determine whether the drilling
`fluid applied in one well was sufficiently “fragile” to infringe and yet maintain its claimed
`distinction over the prior art. Id. at 1254-56. Because the patent specification provided
`no examples or meaningful guidance for a POSITA to make this determination on the
`allegedly novel limitation, a POSITA would not “know from one [accused] well to the
`next whether a certain drilling fluid was within the scope of the claims[.]” Id. Thus, the
`term was indefinite because it would “require that an artisan make a separate
`infringement determination for every set of circumstances in which the composition may
`be used” and that “such determinations are likely to result in differing outcomes
`(sometimes infringing and sometimes not).” Id.
`
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`Notably, in so holding, the court drew a clear distinction between the case before
`it and its other precedent, like In re Marosi, in which indefiniteness challenges failed as
`a matter of law because the specification provided “a general guideline” and “examples
`sufficient” for a POSITA to determine whether the claim limitation is present. Id. And the
`Court made clear that an accused infringer can only meet thee “exacting standard by
`proving, with clear and convincing evidence, that a POSITA could not discern the
`boundaries of a claim based “on the claim language, the specification and [] her
`knowledge of the relevant art area.” Id. at 1250.
`Halliburton is inapposite because the disputed claim language, the specification
`and the relevant knowledge in the art here are very different, in several ways. First,
`unlike the “fragile gel” term in Halliburton, whether an algorithm is “asymmetric” does
`not depend on a variety of unknown factors. Zeger Decl. ¶20. Rather, as the patents
`make clear, a POSITA would understand that certain algorithms are either asymmetric
`or not, under any scenario or setting. Id.; ‘535 patent at 9:63-10:9. Second, in contrast
`to Halliburton, “asymmetric” is not the only term that distinguishes the asserted claims
`from the prior art. And regardless, the specification here also makes clear that there is a
`single, known comparison involved in the determination of whether something is
`“asymmetric.” Third, the asserted patents furt