Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 1 of 32 PageID #: 4921
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`C.A. No. 12-1595-LPS
`
`C.A. No. 12-1596-LPS
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`C.A. No. 12-1597-LPS
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`C.A. No. 12-1599-LPS
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`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC. and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`
`Defendants.
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`APPLE INC.,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`
`Defendants.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MICROSOFT MOBILE INC.,
`
`
`Defendant.
`
`
`
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`

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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 2 of 32 PageID #: 4922
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`C.A. No. 12-1601-LPS
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`C.A. No. 12-1602-LPS
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`C.A. No. 13-919-LPS
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`C.A. No. 13-920-LPS
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`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
`
`
`Defendants.
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`GOOGLE LLC,
`
`
`Defendant.
`
`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`OATH HOLDINGS INC., and
`OATH INC.,
`
`
`
`Defendants.
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`

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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 3 of 32 PageID #: 4923
`
`PLAINTIFF’S ANSWERING CLAIM CONSTRUCTION BRIEF
`ADDRESSING U.S. PATENT NUMBERS 7,917,843 AND 8,306,993
`
`SMITH, KATZENSTEIN & JENKINS, LLP
`
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Beth A. Swadley (No. 6331)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`Tel: (302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`bswadley@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
`
`Of Counsel:
`
`Stephen Susman
`Seth Ard
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, New York 10019
`Tel: (212) 336-8330
`ssusman@susmangodfrey.com
`sard@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`SUSMAN GODFREY, LLP
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002-5096
`Tel: (713) 651-9366
`jlahad@susmangodfrey.com
`
`Dated: July 17, 2019
`
`
`
`
`
`
`
`
`

`

`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 4 of 32 PageID #: 4924
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`DISPUTED TERMS ............................................................................................................1
`
`A.
`
`“Document” .............................................................................................................1
`
`1.
`
`2.
`
`3.
`
`“Document” Should Not Be Limited to a Word Processing or
`Spreadsheet File ...........................................................................................1
`
`“Document” Does Not Require the User to Enter Text ...............................8
`
`The “Ordinary Meaning” of Document is Not So Limited..........................9
`
`“computer program”/“first computer program”/“second computer
`program” ................................................................................................................10
`
`“first information” ..................................................................................................12
`
`“to determine if the first information is at least one of a plurality of types
`of information that can be searched for” ................................................................14
`
`“providing an input device configured by the first computer program” /
`“providing an input device configured by the document editing
`program” ................................................................................................................16
`
`“wherein the computer implemented method is configured to perform
`each one of action (i), action (ii), and action (iii) using the first contact
`information previously identified as a result of the analyzing” .............................17
`
`“that allows a user to enter a user command to initiate an operation” ...................20
`
`“providing for the user an input device configured so that a single
`execute command from the input device is sufficient to cause the
`performing” ............................................................................................................22
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`“while it is electronically displayed” .....................................................................25
`
`III.
`
`CONCLUSION ..................................................................................................................25
`
`
`
`
`
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`
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`6710838v1/016120
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`i
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 5 of 32 PageID #: 4925
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Akamai Techs., Inc. v. Limelight Networks, Inc.,
`805 F.3d 1368 (Fed. Cir. 2015)............................................................................................3, 13
`
`Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007)..................................................................................................4
`
`Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2012)..................................................................................................4
`
`Cronos Techs., LLC v. Expedia, Inc.,
`No. 13-1538-LPS, 2016 WL 3982309 (D. Del. July 22, 2016) .................................................7
`
`GE Lighting Sols., LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)..................................................................................................3
`
`GPNE Corp. v. Apple, Inc.
`830 F.3d 1365 (Fed. Cir. 2016)..................................................................................................7
`
`Hill-Rom Servis., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)........................................................................................ passim
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006)..................................................................................................7
`
`Howmedica Osteonics Corp. v. Wright Med. Tech. Inc.,
`540 F.3d 1337 (Fed. Cir. 2008)..................................................................................................4
`
`In re Papst Licensing Digital Camera Patent Lit.,
`778 F.3d 1255 (Fed. Cir. 2015)................................................................................................13
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`381 F.3d 1111 (Fed. Cir. 2004)..................................................................................................3
`
`IPXL Holdings, LLC v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)................................................................................................18
`
`Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
`520 F.3d 1367 (Fed. Cir. 2008)....................................................................................17, 18, 19
`
`SafeTCare Mfg., Inc. v. Tele–Made, Inc.,
`497 F.3d 1262 (Fed. Cir. 2007)..................................................................................................4
`
`
`6710838v1/016120
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`ii
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`

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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 6 of 32 PageID #: 4926
`
`Superior Indus., Inc. v. Masaba, Inc.,
`650 Fed. App’x 994 (Fed. Cir. 2016).........................................................................................7
`
`Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .................................................................................................3
`
`
`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)............................................................................................3, 13
`
`Other Authorities
`
`IBM Dictionary of Computing, 10th Ed. (1993) ...........................................................................10
`
`Microsoft Press Computer Dictionary .............................................................................................9
`
`
`
`
`6710838v1/016120
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`iii
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`

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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 7 of 32 PageID #: 4927
`
`In accordance with the Amended Scheduling Order and the Joint Stipulation Regarding
`
`Claim Construction Briefing, Plaintiff Arendi S.A.R.L. (“Arendi”) submits this Responsive Claim
`
`Construction Brief regarding disputed claim terms in U.S. Patent Nos. 7,917,843 and 8,306,993.
`
`I.
`
`INTRODUCTION
`
`Defendants advance an impermissibly narrow view of several claims, seeking to deviate
`
`from the ordinary meaning of terms in ways contrary to precedent. Defendants heavily lean on the
`
`specification, but the specification and the rest of the intrinsic record refute their arguments.
`
`Defendants turn a blind eye to the portions of the record that do not support their constructions and
`
`hope that this Court will follow suit. Defendants do the same for their own dictionaries and experts,
`
`which in fact confirm the fallacy of Defendants’ constructions. And their attempts to use Arendi’s
`
`words against it either backfire or amount to series of non sequiturs. Finally, Defendants’ contrived
`
`indefiniteness complaints fall short of the heightened showing required for such a ruling.
`
`II.
`
`DISPUTED TERMS
`
`A.
`
`“Document”
`
`Defendants unapologetically ask this Court to violate twice a central claim construction
`
`canon by limiting claims to embodiments and examples in the specification. The specification
`
`contains no manifest words of exclusion or disavowal that would permit this overly conservative
`
`approach to claim construction. Worse, the intrinsic record negates Defendants’ proposed
`
`limitations.
`
`1.
`
`“Document” Should Not Be Limited to a Word Processing or Spreadsheet File
`
`Defendants stumble out of the gate by arguing that the “purpose of the invention is to
`
`address the problem of locating and inserting contact information into a document being edited by
`
`a user…” Defs’ Br. at 5 (emphasis added). The claims are not so narrow. And, far from compelling
`
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`6710838v1/016120
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`1
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 8 of 32 PageID #: 4928
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`Defendants’ preferred limitation, the intrinsic record requires that “document” take on a broader
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`meaning.
`
`Defendants’ argument rests upon a selective reading of the specification that transforms
`
`examples into limiting examples. They cite a section of the Background of the Invention, which
`
`refers to the “advent of programs, such as word processors, spreadsheets, etc.” Id. That the patentee
`
`used word processors and spreadsheets as just two examples of “programs” does not justify
`
`limiting “document” to those types of files. To the contrary, the specification’s repeated use of
`
`“e.g.” and “etc.” following references to those types of files confirms that additional programs fall
`
`within the scope of the invention. In fact, the patent even defines “word processors” at the outset
`
`to mean “word processors, spreadsheets, etc.” See Ex. 1 at Col. 1, ll. 28-30. Thus, every
`
`subsequent reference to “word processors” encompasses this broader class of programs.
`
`Defendants proceed to argue that the patents “purport to solve this problem [of locating
`
`and inserting contact information into a document] by enabling an automated search for address
`
`information ‘while the user works simultaneously in another program, e.g., a word processor.’”
`
`Defs’ Br. at 5. Again, the specification points to “word processor” as an example and as explained
`
`above, shorthand for other programs. Nothing in the phrase, “while the user works simultaneously
`
`in another program,” requires that other program to be limited to a word processor or spreadsheet
`
`program. A user can “work simultaneously in” other programs, such as email applications, text
`
`messaging applications, or web browsers, and Defendants provide no reason to assume that a user
`
`would not wish to do so. Indeed, the specification contemplates such other programs:
`
`The program may be extended also to store and retrieve other information, such as
`telephone numbers, fax numbers, email addresses, etc. Once the program recalls
`the telephone numbers, fax numbers, emails addresses, etc., the user can command
`the program to send e-mails, faxes, etc.
`
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`6710838v1/016120
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`2
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 9 of 32 PageID #: 4929
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`Ex. 1, Col. 4 ll.12-18 (emphasis added). As discussed in Arendi’s Opening Brief at 8, word
`
`processing programs and spreadsheet programs do not traditionally send emails or faxes.
`
`
`
`Defendants acknowledge the specifications’ use of “e.g.” but try to brush it aside by
`
`arguing that “the specifications exclusively refer to ‘word processing’ programs” and “do not
`
`suggest how the invention would work outside this context.” Defs’ Br. at 5. In addition to “word
`
`processor” encompassing other programs by definition, the Federal Circuit has rejected this mode
`
`of argument on several occasions, making clear that the specification does not need to describe
`
`every instantiation of an invention. As noted in Arendi’s opening brief, in Akamai Technologies,
`
`Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1376 (Fed. Cir. 2015), the Federal Circuit affirmed
`
`that the claim term “tagging” need not include a “prepending” limitation even though “the only
`
`method of tagging described in the #703 patent involve[d] prepending a virtual server hostname.”
`
`The Court explained, “[E]ven where a patent describes only a single embodiment, claims will not
`
`be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope
`
`using words of manifest exclusion or restriction.” Id. (quoting Innova/Pure Water, Inc. v. Safari
`
`Water Filtration Sys., 381 F.3d 1111, 1117 (Fed. Cir. 2004)).
`
`Likewise, in Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016), the
`
`Federal Circuit rejected Apple’s argument that, because “the only embodiments disclosed in the
`
`’446 patent use a voice channel,” the term “voice input” required a “voice channel.” The Court
`
`reiterated “that it is ‘not enough that the only embodiments, or all of the embodiments, contain a
`
`particular limitation’ to limit claims beyond their plain meaning.” Id. (quoting Thorner v. Sony
`
`Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012)). And in GE Lighting Solutions,
`
`LLC v. AgiLight, Inc., 750 F.3d 1304, 1309-1310 (Fed. Cir. 2014), the Federal Circuit held that
`
`the district court erred by restricting the claimed “IDC connector” to a limited type of connector.
`
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`6710838v1/016120
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 10 of 32 PageID #: 4930
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`The Court held that, while “the specifications only disclose a single embodiment of an IDC
`
`connector in Figure 6, they do not disavow or disclaim the plain meaning of IDC connector or
`
`otherwise limit it to that embodiment.” Id.; see also Howmedica Osteonics Corp. v. Wright Med.
`
`Tech. Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (“[T]he fact that the specification describes only
`
`a single embodiment, standing alone, is insufficient to limit otherwise broad claim language”);
`
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (“[E]ven when the
`
`specification describes only a single embodiment, the claims of the patent will not be read
`
`restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
`
`words of manifest exclusion or restriction.”) (citation omitted).
`
`The Federal Circuit has limited claims to specific embodiments only in limited situations,
`
`such as where the specification indicated that a particular step was required for “successful
`
`manufacture,” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007),
`
`or where the specification characterized a feature as “an important feature of the present
`
`invention,” SafeTCare Mfg., Inc. v. Tele–Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007).
`
`Similarly, the Federal Circuit has limited claims when the patent repeatedly disparaged a feature
`
`as antiquated, inadequate, or difficult to use, thereby putting it outside of the invention’s
`
`scope. Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir.
`
`2012). In this case, the claims do not require a word processor or a spreadsheet program in order
`
`to successfully implement the invention, nor do the specifications frame such programs or files as
`
`important, let alone necessary, features of the present invention. To the contrary, the specification
`
`uses words like “such as,” example, and “etc.” and cannot be used to limit “document” (or
`
`“program”) to word processors and spreadsheets.
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`6710838v1/016120
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 11 of 32 PageID #: 4931
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`Defendants’ own expert disagrees with their narrow reading of the specification. During
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`the ’854 and ’843 IPR proceedings, Defendants expert Dr. Menascé confirmed that the invention
`
`was not limited to word processors:
`
`Well, this invention was geared at several types of programs that could use this
`invention, right. It could be the Word processor. It could be a spreadsheet program.
`So each of these programs may have different ways and mechanisms by which one
`could achieve the inserting, or they may not even have mechanisms that facilitate
`an insert. So these are not claims geared towards Microsoft Word. These are claims
`that are general in the sense that inserting -- it says here “inserting a second
`information into the document.” The document could be managed by a variety
`of programs. It is not just Word.
`
`Ex. 5E, Menascé Dep. Tr., at 77:8-21 (emphasis added).
`
`Defendants fail in their attempts to transform the exemplary references to word processors
`
`and spreadsheets into critical components of the invention. First, Defendants argue at page 6 that
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`“the proposed solution of the claimed invention specifically arose in the context of word
`
`processors.” Incorrect. The specification does not state that the inherent nature or characteristics
`
`of word processing or spreadsheet programs provide either the root of the problem or the
`
`motivation behind the solution. If word processor or spreadsheet files were so critical to the
`
`invention, the patentee would have said so and not used them merely as examples or used phrases
`
`like “such as” or “e.g.” Rather, the patentee would have, as in Andersen Corp. and SafeTCare,
`
`stated that word processor and spreadsheet files bore a critical characteristic or were required for
`
`the successful use of the invention. The portions of the specification relied on by Defendants do
`
`no such thing. See Hill-Rom, 755 F.3d at 1373 (“[A]bsent some language in the specification of
`
`prosecution history suggesting that the wired connection is important, essential, necessary, or the
`
`‘present invention,’ there is no basis to narrow the plain and ordinary meaning of the term datalink
`
`to one type of datalink—a cable.”). Nor have the Defendants identified any distinguishing
`
`characteristic shared by spreadsheet programs and word processing programs—but not, e.g., by
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`6710838v1/016120
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`5
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 12 of 32 PageID #: 4932
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`email programs—that would compel a POSITA to draw that conclusion. Clearly, the patent owner
`
`did not want to limit the invention to word processors and spreadsheets.
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`Defendants misread Arendi’s appellate brief regarding the ’854 patent, and they mistakenly
`
`argue that Arendi told the Federal Circuit that “document” is limited to word processor and
`
`spreadsheet files. Defs’ Opening Br. at 6. In the cited portion of the brief, Arendi explained that
`
`the ’854 patent “frames the problem as automating the interaction between a ‘word processor’ and
`
`a separate ‘information management’ program,” broad categories that are explained later in the
`
`passage. Defs’ Ex. 7B at 5. That statement is correct, but it does not establish what is included as
`
`a “word processor” as that term is defined in the patent. Again, Arendi uses “word processor” as
`
`representative of a broader class of programs. Not even Defendants suggest that the term “word
`
`processor” is used to the exclusion of spreadsheet programs. Defendants’ reference to page 7 of
`
`the appellate brief, Defs’ Opening Br. at 6-7, is even less compelling. Arendi’s arguments in
`
`support of its position that the word processor and the database are independently executable and
`
`run asynchronously does not speak to the meaning of “document.” Arendi differentiated between
`
`a set of exemplary computer programs that could create a document and a set of exemplary
`
`programs that could serve as repositories of related information. As the specification repeatedly
`
`declares, those are examples. Arendi neither purported to restrict the scope of “document” in these
`
`passages of its appellate brief nor did it suggest that only the first set of exemplary programs could
`
`create one.
`
`Defendants argue that word processing documents “define” the invention, but they then
`
`cite language that was intended to expand, not restrict, the scope of the invention. This broadening
`
`language undermines Defendants’ point rather than make it. This passage makes clear that the
`
`invention was not intended to be limited to word processing documents. At the very least, this
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`6710838v1/016120
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`6
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 13 of 32 PageID #: 4933
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`section of the specification militates against finding that “the patentee has demonstrated a clear
`
`intention to limit the claim scope using words of manifest exclusion or restriction.” Hill-Rom, 755
`
`F.3d at 1372 (citation omitted).1
`
`Finally, Defendants criticize Arendi’s construction as circular and confusing, Defs’
`
`Opening Br. at 7, but there is nothing confusing about Arendi’s construction. It tracks the plain
`
`and ordinary meaning of “document,” clarifying that it is an “electronic document,” as opposed to
`
`something printed, that contains textual, as opposed to pictorial, information. There is no claim
`
`construction rule that precludes using “document” as part of a definition of “document.” See
`
`Cronos Techs., LLC v. Expedia, Inc., No. 13-1538-LPS, 2016 WL 3982309, at *6 (D. Del. July
`
`22, 2016) (construing “item code” as “a code corresponding to a purchasable product, or group of
`
`products, that is distinct from the user-discernable representation of the product or group of
`
`products”).
`
`In sum, as Defendants’ expert testified, the “document” is managed by a variety of
`
`programs, and Defendants’ construction should be rejected.
`
`
`1 Defendants misplace reliance on a handful of cases in support of their argument that the patents-
`in-suit here “repeatedly and consistently” characterize “document” in a certain way. Defs’ Opening
`Br. at 7. In GPNE Corp. v. Apple, Inc., 830 F.3d 1365 (Fed. Cir. 2016), the Court held that a “node”
`should be construed as a “pager” because the specifications of the asserted patents did not use the
`word “node” outside of the Abstract and did not refer to “pagers” in an exemplary context. In
`Superior Industries, Inc. v. Masaba, Inc., 650 Fed. App’x 994, 999 (Fed. Cir. 2016), the
`specification made clear that the claimed “support frame” provided “two independent functions”—
`the first of which is to support an earthen ramp—and that the “present invention contemplates
`utilizing the first function or ramp support frame alone…” And in Honeywell International, Inc.
`v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), the specification “[o]n at least four
`occasions” referred to the fuel filter as “this invention” or “the present invention,” such that the
`only “fuel injection system component” claimed was the fuel filter. These disclosures are a far cry
`from the exemplary context in which the patents here discuss word processing and spreadsheet
`files.
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`6710838v1/016120
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`7
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`Case 1:13-cv-00919-LPS Document 129 Filed 07/17/19 Page 14 of 32 PageID #: 4934
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`2.
`
`“Document” Does Not Require the User to Enter Text
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`The claim language does not require that a user enter text. That should end the inquiry. But
`
`Defendants redouble their efforts to impermissibly import imagined limitations from the
`
`specification into the claims by asking this Court to narrow “document” into a file “into which text
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`can be entered.” This limitation is unjustified and unwarranted.
`
`Defendants again rely on examples from the specification to argue that the patents-in-suit
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`“never teach or suggest that the alleged invention could be practiced in a non-editable document.”
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`Defs’ Opening Br. at 8. Defendants misconstrue the analysis. The question is not whether the
`
`specification teaches a non-editable document. Rather, the correct question is whether “the
`
`patentee has demonstrated a clear intention to limit the claim scope using words of manifest
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`exclusion or restriction.” Hill-Rom, 755 F.3d at 1372 (citation omitted). Such disavowal “requires
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`that ‘the specification [or prosecution history] make[] clear that the invention does not include a
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`particular feature.” Id. (alterations in original) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299
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`F.3d 1313, 1327 (Fed. Cir. 2002)). In this case, in order to depart from the plain and ordinary
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`meaning of document, which includes both editable and non-editable documents, Defendants must
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`show that the patentee clearly disclaimed the latter. The standard for disavowal is exacting, and
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`“[a]bsent such language, we do not import limitations from the specification into the claims.” Id.
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`at 1372-1373. Defendants cannot meet this exacting standard.
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`Defendants argue that including non-editable documents within the claims’ scope “would
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`be counter to the purpose of the invention, which is to handle problems associated with searching
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`for address information while editing a document.” Defs’ Opening Br. at 8. The specification does
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`not say that. It states that the invention allows a user to retrieve contact information while he or
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`she “works simultaneously in another program.” Ex. 1 at Col. 2 l. 22. Defendants cannot show
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`clear disavowal by glossing over a word with a different meaning than “edits” or “types.”
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`Defendants also baldly argue that Arendi’s construction “would not allow for the user to
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`‘type’ first information and/or ‘insert’ associated second information, which are highlighted by the
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`specifications as critical aspects of the invention.” Defs’ Opening Br. at 9. This argument suffers
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`from several flaws and should be rejected. As a threshold point, the specification does not describe
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`the ability to “type” first information into the document or insert second information into the
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`document as a “critical aspect.” Text must be in the document, to be sure, but typing in first
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`information is an example, as is inserting second information. Second, the specification describes
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`scenarios in which second information is not inserted into the document. See Ex. 1 at Col. 6 ll. 10-
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`38.
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` Further, as discussed above and at page 9 of Arendi’s Opening Brief, the asserted claims
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`do not all require typing first information or inserting second information into the document.
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`Claims 1 and 23 of the ’843 patent say nothing about a user typing first information. Neither do
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`the asserted claims of the ’993 patent. When the claims require typing first information into the
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`document, they say so, as in claim 1 of the ’356 patent or claim 13 of the ’854 patent. Meanwhile,
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`none of the ’843 or ’993 patents’ asserted claims require that second information be inserted into
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`the document. Arendi’s construction permits typing information, but like the claims themselves,
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`does not require it, and there is no legitimate reason to impart such requirements via Defendants’
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`restrictive construction.
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`3.
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`The “Ordinary Meaning” of Document is Not So Limited
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`Defendants cite the “ordinary meaning” of document as reflected in two dictionaries, but
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`the dictionaries powerfully disprove Defendants’ argument and use “document” much more
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`broadly. Defendants rely on the definition of “document” in the Microsoft Press Computer
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`Dictionary but omit an important part of the definition. After the portion Defendants cite, the
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`Microsoft Press continues, “To a computer, however, data is nothing more than a collection of
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`characters, so a spreadsheet or a graphic is as much a document as is a letter or report. In the
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`Macintosh environment in particular, a document is any user-created work named and saved as a
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`separate file.” Arendi’s Ex. 5C at 4. Further, the Microsoft Press uses the word “document” broadly
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`as part of its definitions of non-word processing and non-spreadsheet files.
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`• ACROBAT: A commercial program from Adobe that converts a fully formatted document
`created on a Windows, Macintosh, MS-DOS, or UNIX platform into a Portable Document
`Format (PDF) file that can be viewed on several platforms. Acrobat enables users to send
`documents
`that contain distinctive
`typefaces, color, graphics, and photographs
`electronically to recipients, regardless of the program used to create the originals. Id. at 5.
`
`
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`.PDF: The file extension that identifies documents encoded in the Portable Document
`Format developed by Adobe Systems. In order to display or print a .pdf file, the user should
`obtain the freeware Adobe Acrobat Reader. Id. at 12.
`
`• HTML: Acronym for Hypertext Markup Language. The markup language used for
`documents on the World Wide Web. HTML is an application of SGML that uses tags to
`mark elements, such as text and graphics, in a document to indicate how Web browsers
`should display these elements to the user and should respond to user actions such as
`activating a link by means of a key press or mouse click. Id. at 6.
`
` •
`
`
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`• WEB BROWSER: A client application that enables a user to view HTML documents on
`the World Wide Web, another network, or the user’s computer; follow the hyperlinks
`among them; and transfer files. Id. at 7.
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`Other dictionaries offer an arguably broader view. See, e.g., Arendi’s Ex. 5D (IBM Dictionary of
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`Computing, 10th Ed. (1993)) (defining document as “a named, structural unit of text that can be
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`stored, retrieved, and exchanged among systems and users as a separate unit”). Thus, the ordinary
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`meaning of “document” negates Defendants’ argument and confirms that their construction should
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`be rejected.
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`B.
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`“computer program”/“first computer program”/“second computer program”
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`Defendants argue that the Court should adopt their proposed construction because Arendi
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`proposed it in 2011. Defendants rely nearly exclusively on Arendi’s prior arguments, which are
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`technically sound and consistent with the specification. The definition that Arendi now proposes
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`is consistent with the intent of the one that it previously favored; however, with the benefit of
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`additional reflection and the input of the PTAB, Arendi appreciates the need for greater precision
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`that will avoid a potential O2 Micro-type dispute regarding claim scope.
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`There are at least two potential shortcomings of the 2011 construction, as explained in
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`Arendi’s Opening Brief at pages 12-14. First, what constitutes a “self-contained set of instructions”
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`is not immediately clear. Second, under the 2011 construction routines or libraries would not
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`qualify as “self-contained”; however, other units of code such as modules, utilities, macros, etc.
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`might not neatly fall into the definition of routine or library. This creates a potential gap in the
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`claim construction. “Independently executable” nips these potential disputes in the bud.
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`Defendants argue that the PTA