Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 1 of 38 PageID #: 6004
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A. No. 12-1595-LPS
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC., and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`AREND! S.A.R.L.,
`
`V .
`
`APPLE, INC.,
`
`AREND! S.A.R.L.,
`
`Defendants.
`
`Plaintiff,
`
`Defendant.
`
`Plaintiff,
`
`C.A. No. 12-1596-LPS
`
`V.
`
`C.A. No. 12-1597-LPS
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`Defendants.
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 2 of 38 PageID #: 6005
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A. No. 12-1599-LPS
`
`MICROSOFT MOBILE, INC.,
`
`AREND! S.A.R.L.,
`
`Defendant.
`
`Plaintiff,
`
`V.
`
`C.A. No. 12-1601-LPS
`
`MOTOROLA MOBILITY LLC,
`f/k/a MOTOROLA MOBILITY, INC.
`
`AREND! S.A.R.L.,
`
`Defendants.
`
`Plaintiff,
`
`V.
`
`C.A. No. 12-1602-LPS
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC. f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC., SONY
`CORPORATION and SONY CORPORATION OF
`AMERICA,
`
`AREND! S.A.R.L.,
`
`V.
`
`GOOGLELLC,
`
`Defendants.
`
`Plaintiff,
`
`Defendant.
`
`C.A. No. 13-919-LPS
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 3 of 38 PageID #: 6006
`
`AREND! S.A.R.L.,
`
`Plaintiff,
`
`V.
`
`C.A. No. 13-920-LPS
`
`OATH HOLDINGS INC. and OATH INC.,
`
`Defendants.
`
`Neal C. Belgam, Eve H. Ormerod, and Beth A. Swadley, SMITH, KATZENSTEIN &
`JENKINS, LLP, Wilmington, DE; Stephen Susman, Seth Ard, and Max Straus, SUSMAN
`GODFREY, LLP, New York, NY; John Lahad, SUSMAN GODFREY, LLP, Houston, TX
`
`Attorneys for Plaintiffs
`
`Jeremy D. Anderson, FISH & RICHARDSON, P.C., Wilmington, DE; Steven R. Katz and
`Matthew C. Berntsen, FISH & RICHARDSON, P.C., Boston, MA
`
`Attorneys for Defendants LG Electronics, Inc., LG Electronics USA, Inc. and LG
`Electronics MobileComm U.S.A., Inc.
`
`Denise S. Kraft, Brian A. Biggs, and Erin E. Larson, DLA PIPER LLP (US), Wilmington, DE;
`Mark D. Fowler, Christine K. Corbett, and Summer Torrez, DLA PIPER LLP (US), East Palo
`Alto, CA; Robert C. Williams and Kevin C. Hamilton, DLA PIPER LLP (US), San Diego, CA
`
`Attorneys for Defendant Apple Inc.
`
`Richard K. Herrmann, Mary B. Matterer, and Kenneth L. Dorsney, MORRIS JAMES LLP,
`Wilmington, DE; Brian C. Riopelle and David E. Finkelson, McGuire Woods LLP, Richmond,
`VA; Rachelle Thompson, McGuire Woods LLP, Raleigh, NC
`
`Attorneys for Defendants Blackberry Limited and Blackberry Corporation
`
`Jack B. Blumenfeld and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT & TUNNELL LLP,
`Wilmington, DE; Heidi L. Keefe and Lowell D. Mead, COOLEY LLP, Palo Alto, CA; DeAnna
`Allen and Phillip E. Morton, COOLEY LLP, Washington, DC
`
`Attorneys for Defendants Microsoft Mobile, Inc. f/k/a Nokia Inc.
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 4 of 38 PageID #: 6007
`
`David E. Moore, Bindu A. Palapura, and Stephanie E. O' Byrne, POTTER ANDERSON &
`CORROON LLP, Wilmington, DE; Robert W. Unikel, Robert Laurenzi, Michelle Marek
`Figueiredo, and John Cotiguala, PAUL HASTINGS LLP, Chicago, IL
`
`Attorneys for Defendants Motorola Mobility LLC f/k/a Motorola Mobility Inc. and
`Google Inc.
`
`Rodger D. Smith II, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE; Jeffri
`A. Kaminski and Justin E. Pierce, VENABLE LLP, Washington, DC
`
`Attorneys for Defendants Sony Mobile Communications (USA) Inc., Sony Corporation,
`and Sony Corporation of America
`
`Jack B. Blumenfeld and Anthony David Raucci, MORRIS, NICHOLS, ARSHT & TUNNELL
`LLP, Wilmington DE; Jeffri A. Kaminski, VENABLE LLP, Washington, DC
`
`Attorneys for Defendants Oath Holdings Inc. and Oath Inc.
`
`MEMORANDUM OPINION
`
`August 19, 2019
`Wilmington, Delaware
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 5 of 38 PageID #: 6008
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`Plaintiff Arendi S.A.R.L. ("Arendi") sued Defendants LG Electronics, Inc., LG
`
`Electronics USA, Inc., LG Electronics MobileComrn U.S.A., Inc. (together, "LG"), Apple Inc.
`
`("Apple"), Blackberry Limited, Blackberry Corporation (together, "Blackberry"), Microsoft
`
`Mobile, Inc. f/k/a Nokia Inc. ("MMI"), Motorola Mobility LLC f/k/a Motorola Mobility Inc.
`
`("Motorola"), Sony Mobile Communications (USA) Inc., Sony Corporation, Sony Corporation
`
`of America (together, "Sony"), Google Inc. ("Google"), Oath Holdings Inc., and Oath Inc.
`
`(together, "Oath"), alleging patent infringement. (C.A. No. 12-1595 D.I. 1; C.A. No. 12-1596
`
`D.I. 1; C.A. No. 12-1597 D.I. 1; D.I. 12-1599 D.I. 1; D.I. 12-1601 D.I. 1; C.A. No. 12-1602 D.I.
`
`1; C.A. No. 13-919 D.I. 1; C.A. No. 13-920 D.I. 1) Arendi alleges that LG, Apple, Blackberry,
`
`MMI, Motorola, and Sony infringe Arendi's U. S. Patent Nos. 7,917,843 ("the ' 843 patent") and
`
`8,306,993 ("the ' 993 patent"). Arendi alleges that Oath infringes the ' 843 and ' 993 patents, and
`
`also Arendi' s U.S. Patent No. 7,496,854 ("the ' 854 patent"). Arendi alleges that Google
`
`infringes the ' 843 , ' 993 , and ' 854 patents as well as Arendi's U.S Patent No. 7,921,3 56 ("the
`
`'356 patent"). Each asserted patent is entitled, "Method, System and Computer Readable
`
`Medium for Addressing Handing from a Computer Program."
`
`Presently before the Court are the parties' disputes over the meaning of certain terms in
`
`the asserted claims. The parties submitted technology tutorials (C.A. No. 13-919 D.I. 115, 116),
`
`and two sets of claim construction briefs: one pertaining to terms appearing in the ' 843 and ' 993
`
`patents, which is joined by all defendants (C.A. 12-1595 D.I. 111 , 11 2, 119, 120); and the other
`
`pertaining to terms that only appear in the ' 854 patent, which is joined by Defendants Google
`
`and Oath (C.A. No. 13-919 D.I. 117, 119, 127, 130). The Court held a claim construction
`
`hearing on July 26, 2019. (C.A. No. 12-1595 D.I. 125 ("Tr."))
`
`1
`
`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 6 of 38 PageID #: 6009
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`I.
`
`LEGAL STANDARDS
`
`The ultimate question of the proper construction of a patent presents an issue of law. See
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 , 837 (2015) (citing Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "It is a bedrock principle of patent law that the
`
`claims of a patent define the invention to which the patentee is entitled the right to exclude."
`
`Phillips v. AWHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation and internal quotation
`
`marks omitted). "[T]here is no magic formula or catechism for conducting claim construction."
`
`Id. at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in
`
`light of the statutes and policies that inform patent law." Id.
`
`"[T]he words of a claim are generally given their ordinary and customary meaning . . .
`
`[ which is] the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention, i.e., as of the effective filing date of the patent application."
`
`Id. at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a
`
`claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321
`
`(internal quotation marks omitted). The patent "specification is always highly relevant to the
`
`claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
`
`of a disputed term." Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`While "the claims themselves provide substantial guidance as to the meaning of
`
`particular claim terms," the context of the surrounding words of the claim also must be
`
`considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question,
`
`both asserted and unasserted, can also be valuable sources of enlightenment ... [b ]ecause claim
`
`terms are normally used consistently throughout the patent." Id. (internal citation omitted).
`
`It is likewise true that "[d]ifferences among claims can also be a useful guide .... For
`
`example, the presence of a dependent claim that adds a particular limitation gives rise to a
`
`2
`
`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 7 of 38 PageID #: 6010
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`presumption that the limitation in question is not present in the independent claim." Id at 1314-
`
`15 (internal citation omitted). This "presumption is especially strong when the limitation in
`
`dispute is the only meaningful difference between an independent and dependent claim, and one
`
`party is urging that the limitation in the dependent claim should be read into the independent
`
`claim." SunRace Roots Enter. Co. , Ltd v. SRAMCorp. , 336 F.3d 1298, 1303 (Fed. Cir. 2003 ).
`
`It is also possible that "the specification may reveal a special definition given to a claim
`
`term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
`
`inventor' s lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that " [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 or expressions of manifest exclusion or restriction." Hill-Rom Servs., Inc. v. Stryker
`
`Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks omitted).
`
`In addition to the specification, a court "should also consider the patent's prosecution
`
`history, if it is in evidence." Markman v. Westview Instruments, Inc. , 52 F.3d 967, 980 (Fed. Cir.
`
`1995), aff'd, 517 U.S . 370 (1996). The prosecution history, which is "intrinsic evidence,"
`
`"consists of the complete record of the proceedings before the [Patent and Trademark Office]
`
`and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317.
`
`"[T]he prosecution history can often inform the meaning of the claim language by demonstrating
`
`how the inventor understood the invention and whether the inventor limited the invention in the
`
`course of prosecution, making the claim scope narrower than it would otherwise be." Id
`
`"In some cases, . .. the district court will need to look beyond the patent' s intrinsic
`
`evidence and to consult extrinsic evidence in order to understand, for example, the background
`
`science or the meaning of a term in the relevant art during the relevant time period." Teva, 135
`
`3
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`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 8 of 38 PageID #: 6011
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`S. Ct. at 841 . "Extrinsic evidence consists of all evidence external to the patent and prosecution
`
`history, including expert and inventor testimony, dictionaries, and learned treatises." Markman ,
`
`52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the
`
`meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to
`
`collect the accepted meanings of terms used in various fields of science and technology."
`
`Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court' s
`
`understanding of the technical aspects of the patent is consistent with that of a person of skill in
`
`the art, or to establish that a particular term in the patent or the prior art has a particular meaning
`
`in the pertinent field. " Id. Nonetheless, courts must not lose sight of the fact that "expert reports
`
`and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
`
`from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may
`
`be useful to the court," it is "less reliable" than intrinsic evidence, and its consideration "is
`
`unlikely to result in a reliable interpretation of patent claim scope unless considered in the
`
`context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously
`
`describes the scope of the patented invention, reliance on any extrinsic evidence is improper.
`
`See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999).
`
`Finally, " [t]he 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."
`
`Renishaw PLC v. Marposs Societa ' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
`
`that "a claim interpretation that would exclude the inventor' s device is rarely the correct
`
`interpretation." Osram GmbH v. Int '! Trade Comm 'n, 505 F.3d 1351 , 1358 (Fed. Cir. 2007)
`
`(internal quotation marks omitted).
`
`4
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`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 9 of 38 PageID #: 6012
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`II.
`
`CONSTRUCTION OF DISPUTED TERMS 1
`
`A.
`
`'843 and '993 Patents2
`
`1.
`
`"document"3
`
`Arendi
`"electronic document containing textual information"
`Defendants
`"a word processing or spreadsheet file into which text can be entered"
`Court
`"a word processing, spreadsheet, or similar file into which text can be entered"
`
`With respect to the term "document," the parties have two disputes. First, the parties
`
`disagree as to whether a "document" must be a word processing or spreadsheet file ( as
`
`Defendants contend), or whether it may be any electronic display of text ( as Arendi contends).
`
`(D.I. 111 at 5-8; D.I. 112 at 4-8) Second, the parties disagree as to whether a "document" is a
`
`file into which text can be entered (as Defendants contend), or whether it may be non-editable
`
`(as Arendi contends). (D.I. 111 at 8-9; D.I. 11 2 at 9-11 ) The Court addresses each dispute in
`
`turn.
`
`First, although the claims use "document" in a manner more narrow than its plain
`
`meaning, it is not solely limited to conventional word processing and spreadsheet files. As the
`
`patents explain, the invention relates to "name and address handling . . . within a document
`
`1 The Court will adopt the parties' agreed-upon constructions. The Court will also adopt the
`definition of a person of ordinary skill provided by Arendi (D.I. 11 2 at 4), which Defendants
`agree should apply (D.I. 119 at 18 n.7; Tr. at 84).
`
`2 In this section, unless otherwise indicated, citations to the record are to C.A. No. 12-1595, and
`"Defendants" refers to all defendants.
`
`3 The term "document" appears in all asserted claims.
`
`5
`
`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 10 of 38 PageID #: 6013
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`created by [a] computer program." (' 84 3 patent, 4 1: 18-26) Each described embodiment either
`
`uses a word processing program or a spreadsheet program, and the patents' figures specifically
`
`depict the use of Microsoft® Word and Microsoft® Excel. ('843 patent, Figs. 3-15) The patents
`
`also effectively "define[]" the invention as limited to "word processing documents:"
`
`Although the present invention is defined in terms of word
`processing documents, such as WORD™ documents and
`EXCEL™ spreadsheets, the present invention is applicable to all
`types of word processing documents such as NOTEPAD™,
`WORDPAD™, WORDPERFECT™, QUATRO-PRO™,
`AMIPRO™, etc. as will be readily apparent to those skilled in the
`art.
`
`(' 843 Patent, 9:61-67) (emphasis added) Yet the patents also define the term "word processor"
`
`more broadly than its plain meaning:
`
`In recent years, with the advent of programs, such as word
`processors, spreadsheets, etc. (hereinafter called "word
`processors'' users may require retrieval of information, such as
`name and address information, etc., for insertion into a document,
`such as a letter, fax, etc., created with the word processor.
`
`(See ' 843 patent, 1:28-32) (emphasis added)
`
`The patents' definition of the invention "in terms of word processing documents" must be
`
`read in light of its definition of "word processor." Notably, inclusion of the word "etc." in the
`
`definition of "word processor" means that "word processor" includes not only conventional word
`
`processors and spreadsheet programs, but also similar programs that are not conventionally
`
`thought of as word processors or spreadsheets. See Indacon, Inc. v. Facebook, Inc., 824 F.3d
`
`1352, 1355 (Fed. Cir. 2016) ("[T]he use of ' etc. ' in [a] definition implies additional, but similar
`
`forms of expression.") (emphasis added); see also Sports Graphics, Inc. v. United States, 24 F.3d
`
`4 The ' 843 , '993, and ' 356 patents are both continuations of the same patent application, so they
`share the same specification. The '854 patent has a similar specification.
`
`6
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 11 of 38 PageID #: 6014
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`1390, 1392 (Fed. Cir. 1994) ("[W]here an enumeration of specific things is followed by a general
`
`word or phrase, the general word or phrase is held to refer to things of the same kind as those
`
`specified.") (emphasis added). Applying this definition of "word processor," it follows that
`
`"document" includes not only conventional word processor files and spreadsheet files, but also
`
`files from similar programs.
`
`It follows that neither side' s proposed construction is correct. Arendi' s proposed
`
`construction of "document" is overbroad because it is not limited to documents that are similar to
`
`word processing or spreadsheet files, ignoring that "the present invention is defined in terms of'
`
`such word processing documents. ('843 patent, 9:61-67) On the other hand, Defendants'
`
`construction is unduly narrow. Although Defendants' construction of "document" properly
`
`includes files produced by word processors ( as that term is conventionally used) and spreadsheet
`
`programs, Defendants would exclude files created by any other type of computer program. In
`
`doing so, Defendants essentially read the "etc." out of the patents' definition of "word
`
`processors." See Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1563 (Fed.
`
`Cir. 1990) ("[A] patentee is free to be his or her own lexicographer . . . and thus may use terms in
`
`a manner contrary to or inconsistent with one or more of their ordinary meanings.") (internal
`
`citations omitted).
`
`Defendants' suggestion that the claimed invention would not work outside of the context
`
`of word processors (as that term is conventionally understood) lacks merit. (See D.I. 111 at 7)
`
`Defendants argue 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," and that the patents "do
`
`not suggest how the invention would work outside the context" of a user working in a word
`
`processor. (See D.I. 111 at 5-6) But, as Arendi points out (D.I. 112 at 4), the record discloses no
`
`7
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`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 12 of 38 PageID #: 6015
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`reason why the methods taught in the specification could not be applied to certain other
`
`computer programs - for example, a web browser in which a user is drafting an email.
`
`For these reasons, the Court will construe "document" in relevant part as "a word
`
`processing, spreadsheet, or similar file. "
`
`Turning to the parties' second dispute - whether a "document" is a file into which text
`
`can be entered (as Defendants contend), or whether it may be non-editable (as Arendi contends)
`
`-the Court agrees with Defendants. (See D.I. 111 at 8-9; D.I. 112 at 9-11)
`
`A "document" as used here must be editable. As the Abstract explains, the invention is
`
`directed to "look[ing] up data corresponding to what [a] user types, or partly typed," such that the
`
`data is "displayed and possibly entered into the word processor, if such related data exists."
`
`('843 patent, Abstract) (emphasis added) The patents define "word processor" more broadly
`
`than the plain meaning of the term, but the patent' s definition of the term- "word processors,
`
`spreadsheets, etc." - is necessarily limited to computer programs in which a user can enter data.
`
`See lndacon, 824 F.3d at 1355. The 15 invention-specific figures, the seven examples, and the
`
`"object[s] of the invention" provided in the specification support the understanding that the
`
`invention' s purpose is to retrieve and possibly enter data into a document based on information
`
`entered by the user. (See, e.g. , ' 843 patent, Figs. 1-15, 1 :53-2:34, 5:59-8:67) This understanding
`
`is reinforced by the patents' repeated use of the phrase "the present invention is defined in terms
`
`of' to limit the invention to a particular technological context.5 The patents never suggest how
`
`5 For example:
`
`•
`
`"Although the present invention is defined in terms of information management or is
`database programs, such as OUTLOOK™, etc., the present invention is applicable to all
`types of information management or database programs such as ACCESS™,
`
`8
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 13 of 38 PageID #: 6016
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`the invention would operate if the document were non-editable; if the document were non(cid:173)
`
`editable, it is unclear how a user could type data and how a computer could enter related address
`
`data into the document. The term "document" must be construed consistent with the patents'
`
`repeated and consistent requirement in the specification that documents be editable. See GPNE
`
`Corp. v. Apple Inc., 830 F.3d 1365, 1370-71 (Fed. Cir. 2016). This is "faithful to the invention
`
`disclosed in the specification." Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1346 (Fed.
`
`Cir. 2018).
`
`Arendi' s claim differentiation argument lacks merit. (See D.I. 120 at 9-10) Arendi
`
`argues that requiring a "document," in itself, to be editable would render redundant limitations in
`
`certain claims that explicitly require the document to be editable. (Id.) But the claims Arendi
`
`differentiates are not an independent claim and one of its dependent claims - a situation in which
`
`claim differentiation is at its strongest; instead, they are two distinct independent claims. See
`
`•
`
`•
`
`•
`
`ORACLE™, DBASE™, RBASE™, CARDFILE™, including 'flat files,' etc., as will be
`readily apparent to those skilled in the art." (' 843 patent, 10:1-7)
`
`"Although the present invention is defined in terms of providing an input device, such as
`a button 42 in a word processor for address handling therein, the present invention may
`be practiced with all types of input devices, such as touch screen, keyboard button, icon,
`menu, voice command device, etc., as will be readily apparent to those skilled in the art."
`('843 patent, 10:8-13)
`
`"Although the present invention is defined in terms of a program retrieving information
`from a document before searching a database, the user may select the information in the
`document to be searched by the program in the database (e.g., by highlighting, selecting,
`italicizing, underlining, etc.), as will be readily apparent to those skilled in the art." (' 843
`patent, 10:14-19)
`
`"Although the present invention is defined in terms of a program retrieving a name or
`portion thereof from a document before searching a database the program may retrieve an
`address or portion thereof from the document before searching the database and insert,
`correct, complete, etc., the retrieved address based on the information found in the
`database corresponding to the retrieved address or portion thereof, as will be readily
`apparent to those skilled in the art." (' 843 patent, 10:20-27)
`
`9
`
`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 14 of 38 PageID #: 6017
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`generally Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599, 607 (Fed. Cir. 2015) (explaining that
`
`because "patentees often use different language to capture the same invention," doctrine of claim
`
`differentiation is "discount[ ed] where it is invoked based on independent claims rather than the
`
`relation of an independent and dependent claim"). Atlas' reasoning carries special force here,
`
`where the two independent claims on which Arendi relies are in different patents filed years
`
`apart. See id Arendi' s claim differentiation argument, therefore, does not outweigh "the clear
`
`import of the specification." See Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1331
`
`(Fed. Cir. 2009).
`
`For these reasons, the Court construes a "document," in relevant part, as "a file into
`
`which text can be entered."
`
`2.
`
`"first information"6
`
`Arendi
`"text in a document that can be used as input for a search operation in a source external to the
`document"
`Defendants
`"information entered by the user into a document"
`Court
`"text in a document that can be used as input for a search operation in a source external to the
`document"
`
`The parties dispute whether "first information" must be entered by a "user" ( as
`
`Defendants propose) or whether it need not be entered by the user (as Arendi proposes). (D.I.
`
`111 at 12; D.I. 112 at 11) The Court agrees with Arendi.
`
`Nothing in the patents justifies limiting "first information" to information entered by "the
`
`user." The claims recite a "user" who enters a user command (e.g., pressing a button) to "initiate
`
`an operation" on the first information (e.g., looking up contact information). (See, e.g. , '843
`
`6 The term "first information" appears in claims 1, 8, 23 , and 30 of the '843 patent.
`
`10
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`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 15 of 38 PageID #: 6018
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`patent, cl. 1; 5 :63-6:5) Defendants' construction would require the first information to be
`
`entered by the same user who ultimately initiates the lookup operation. Nothing in the
`
`specification indicates that it is "essential," "necessary," or even "important" for the same user
`
`both to enter first information and initiate the lookup operation. Defendants' construction is
`
`unduly limiting. 7 See Hill-Rom, 755 F.3d at 1372.
`
`3.
`
`"computer program" 8
`
`Arendi
`"independently executable computer application"
`Defendants
`"a self-contained set of instructions, as opposed to a routine or library, intended to be executed
`on a computer so as to perform some task"
`Court
`"a self-contained set of instructions, as opposed to a routine or library, intended to be executed
`on a computer so as to oerf orm some task"
`
`Defendants' construction was first proposed by Arendi in a related case, which settled
`
`before the Court issued a Markman opinion. (D.I. 111 at 10) Arendi contends that its prior
`
`construction is not wrong, but that its current construction - which is taken from the PT AB ' s
`
`subsequent construction of "application program" in a related IPR - is both clearer and "avoids a
`
`possible pitfall" in Defendants' construction: that Defendants' construction might be read
`
`(improperly, in Arendi' s view) to include modules and utilities, which, to Arendi, are not
`
`7 For example, nothing in the specifications justifies reading the term "first information" to
`exclude an embodiment in which one user enters a name (i.e., "first information") and another
`user clicks a button to initiate retrieval of an address corresponding to that name. Nor does
`anything in the specifications justify reading "first information" to exclude an embodiment in
`which a user opens an existing document that already has a name ( entered by someone else), and
`the user initiates an operation to retrieve an address corresponding to the first information.
`Defendants' construction would improperly exclude these embodiments.
`
`8 Tue terms "computer program," "first computer program," and "second computer program"
`appear in claims 1, 17, 19, and 23 of the ' 843 patent, and claims 93 , 98, and 101 of the ' 854
`patent.
`
`11
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`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 16 of 38 PageID #: 6019
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`"computer programs." (D.I. 112 at 12-14; Tr. at 69) Defendants argue that a module or utility
`
`could be a "computer program," depending on how the module or utility is implemented. (D.I.
`
`119 at 12-14; Tr. at 76)
`
`The Court agrees with Defendants' that modules and utilities can be "computer
`
`programs." As Defendants point out (D.I. 119 at 12-14), Arendi' s position that neither a
`
`"module" nor a "utility" can be an "application program" was squarely rejected by the PTAB in
`
`a decision that was affirmed by the Federal Circuit. (See D.I. 107-3 Ex. 6T at 10-11) The
`
`Federal Circuit's affirmance is not dispositive; it establishes the meaning of "application
`
`program" but not necessarily the meaning of "computer program," which is the term being
`
`disputed before the Court.9 Even so, the Court is persuaded by the PTAB 's reasoning that
`
`nothing in the specification categorically prevents modules and utilities from being "application
`
`programs." This same reasoning applies with equal force to "computer program."
`
`Notwithstanding certain of Arendi's rhetoric (see, e.g., D.I. 120 at 10-11), Arendi has
`
`only identified one potential point of disagreement between the parties pertinent to this claim
`
`term: whether a module or utility can possibly be a "computer program." (See id) In resolving
`
`this dispute, the Court has (for now) met its obligation to resolve "actual" claim construction
`
`disputes. See 02 Micro Int '! Ltd v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed.
`
`Cir. 2008).
`
`9 Also, the PT AB evaluated the claims under the broadest reasonable interpretation standard.
`(See D.I. 107-3 Ex. 6T at 6-11 )
`
`12
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`

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`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 17 of 38 PageID #: 6020
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`4.
`
`"to determine if the first information is at least one of a plurality of
`types of information that can be searched for" 10
`
`Arendi
`"to determine if the first information belongs to one or more of several predefined categories
`of information that can be searched for"
`Defendants
`Indefinite
`Court
`"to determine if the first information belongs to one or more of several predefined categories
`of identifying information ( e.g., a name) or contact information ( e.g., a phone number, a fax
`number, or an email address) that can be searched for in an information source external to the
`document"
`
`Claims 1 and 23 of the ' 843 patent include the following limitation:
`
`while the document is being displayed, analyzing in a computer
`process frrst information from the document to determine if the
`first information is at least one of the plurality of types of
`information that can be searched for to find second information
`related to the frrst information.
`
`(Emphasis added) Defendants contend that the highlighted claim term is indefinite because it
`
`fails to describe (1 ) what kind of "information" is claimed and (2) where the search is
`
`performed. (D.I. 111 at 13) Defendants have not met their burden to show indefiniteness by
`
`clear and convincing evidence. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
`
`(2014).
`
`A POSA would understand with reasonable certainty what kind of information is "first
`
`information." The specification makes clear that the invention relates to address handling. (See
`
`e.g. , ' 843 patent, Title ("Method, System and Computer Readable Medium for Addressing
`
`Handling from a Computer Program") (emphasis added); ' 843 patent, Abstract (noting that
`
`invention "look[ s] up data corresponding to ... [a] name and/or address") ( emphasis added);
`
`' 843 patent, 1: 18-20 ("This invention relates to a method, system and computer readable medium
`
`10 This term appears in claims 1 and 23 of the ' 843 patent.
`
`13
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`

`

`Case 1:13-cv-00920-LPS Document 147 Filed 08/19/19 Page 18 of 38 PageID #: 6021
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`for name and address handling .... ") (emphasis added); ' 843 patent, 1:53-55 (" [A]n object of
`
`the present invention is to provide a method, system and computer readable medium for address
`
`handling within a computer program . . .. ") ( emphasis added); ' 843 patent, 10: 8-10 ("[T]he
`
`present invention is defined in terms of providing an input device, such as a button 42 in a word
`
`processor for address handling therein . ... ") (emphasis added); ' 843 patent, 10:20-27
`
`("Although the present invention is defined in terms of a program retrieving a name . .. from a
`
`document before searching a database[,] the program may retrieve an address ... from the
`
`document before searching the database and insert, correct, complete, etc. the retrieved address
`
`based on the information found in the database.") (emphasis added)) Therefore, a POSA
`
`reviewing the specification would understand that "first information" must be identifying ( e.g.,
`
`name) and/or contact ( e.g., address) information. 11 The Court' s construction reflects this
`
`conclusion. See Phillips, 415 F.3d at 1313.
`
`Defendants' argument based on Arendi' s position during the IPR of the ' 843 patent is
`
`unpersuasive. (See D.I. 119 at 19) To Defendants, Arendi' s conte