Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 1 of 29 PageID #: 2491
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`SOUND VIEW INNOVATIONS, LLC,
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`FACEBOOK, INC.,
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`Plaintiff,
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`v.
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`Defendant.
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`No. 16-cv-116 (RGA)
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`MEMORANDUM OPINION
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`John C. Phillips, Jr., Esq., Megan C. Haney, Esq., Phillips, Goldman, McLaughlin &
`Hall, P.A., Wilmington, Del.; Alan S. Kellman, Esq. (argued), Tamir Packin, Esq.
`(argued), Jason Berrebi, Esq., Edward B. Geist, Esq. (argued), Tom BenGera, Esq.,
`Wesley L. White, Esq., Desmarais LLP, New York, N.Y., attorneys for Plaintiff.
`
`Karen Jacobs, Esq., Jack B. Blumenfeld, Esq., Morris, Nicholas, Arsht & Tunnell
`LLP, Wilmington, Del.; Heidi L. Keefe, Esq. (argued), Phillip E. Morton, Esq.
`(argued), Andrew C. Mace, Esq. (argued), Cooley LLP, Palo Alto, Cal., attorneys for
`Defendant.
`
`May fi, 2017
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SOUND VIEW INNOVATIONS, LLC,
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`FACEBOOK, INC.,
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`No. 16-cv-116 (RGA)
`
`MEMORANDUM OPINION
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`John C. Phillips, Jr., Esq., Megan C. Haney, Esq., Phillips, Goldman, McLaughlin &
`Hall, P.A., Wilmington, Del.; Alan S. Kellman, Esq. (argued), Tamir Packin, Esq.
`(argued), Jason Berrebi, Esq., Edward B. Geist, Esq. (argued), Tom BenGera, Esq.,
`Wesley L. White, Esq., Desmarais LLP, New York, N.Y., attorneys for Plaintiff.
`
`Karen Jacobs, Esq., Jack B. Blumenfeld, Esq., Morris, Nicholas, Arsht & Tunnell
`LLP, Wilmington, Del.; Heidi L. Keefe, Esq. (argued), Phillip E. Morton, Esq.
`(argued), Andrew C. Mace, Esq. (argued), Cooley LLP, Palo Alto, Cal., attorneys for
`Defendant.
`
`May fi, 2017
`
`
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 2 of 29 PageID #: 2492
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`~ti:· !STRICT JUDGE:
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`Plaintiff Sound View and Defendant Face book ask the Court to construe
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`several terms from U.S. Patents No. 5,991,845; No. 6,125,371; No. 6,732,181; No.
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`7,366, 786; No. 7,412,486; and No. 8, 135,860. The '181 patent and '786 patent share
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`a common specification; otherwise, the patents are unrelated. The parties submitted
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`a joint claim construction brief that included fifty-four terms to be construed. (D.I.
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`82). I ordered the parties to narrow the field of terms for hearing (D.I. 85) and the
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`parties submitted a letter requesting a hearing on ten terms (D.I. 88). I held a
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`Markman hearing on March 31, 2017 on the ten terms. (D.I. 89). This opinion
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`addresses only those terms.
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`I.
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`LEGAL STANDARD
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`"It is a bedrock principle of patent law that the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude." Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane) (internal quotation marks
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`omitted). Claim construction aids the factfinder in determining the scope of those
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`claims.
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`A.
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`General Principles of Claim Construction
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`"'[T]here is no magic formula or catechism for conducting claim construction.'
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`Instead, the court is free to attach the appropriate weight to appropriate sources 'in
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`light of the statutes and policies that inform patent law."' Soft View LLC v. Apple
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`2
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 3 of 29 PageID #: 2493
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`Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at
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`1324) (alteration in original). When construing patent claims, a court considers the
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`literal language of the claim, the patent specification, and the prosecution history.
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en
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`bane), aff'd, 517 U.S. 370 (1996). Of these sources, "the specification is always
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`highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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`single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315
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`(internal quotation marks omitted).
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`"[T]he words of a claim are generally given their ordinary and customary
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`meaning .... [Which is] the meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the
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`effective filing date of the patent application." Id. at 1312-13 (citations and internal
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`quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to
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`[an] ordinary artisan after reading the entire patent." Id. at 1321 (internal
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`quotation marks omitted). "In some cases, the ordinary meaning of claim language
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`as understood by a person of skill in the art may be readily apparent even to lay
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`judges, and claim construction in such cases involves little more than the
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`application of the widely accepted meaning of commonly understood words." Id. at
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`1314.
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`3
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 4 of 29 PageID #: 2494
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`When a court relies solely upon the intrinsic evidence-the patent claims, the
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`specification, and the prosecution history-the court's construction is a
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`determination of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
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`841 (2015). The court may also make factual findings based upon consideration of
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`extrinsic evidence, which "consists of all evidence external to the patent and
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`prosecution history, including expert and inventor testimony, dictionaries, and
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`learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks
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`omitted). Extrinsic evidence may assist the court in understanding the underlying
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`technology, the meaning of terms to one skilled in the art, and how the invention
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`works. Id. Extrinsic evidence, however, is less reliable and less useful in claim
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`construction than the patent and its prosecution history. Id.
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`"A claim construction is persuasive, not because it follows a certain rule, but
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`because it defines terms in the context of the whole patent." Renishaw PLC v.
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`Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a
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`claim interpretation that would exclude the inventor's device is rarely the correct
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`interpretation." Osram GMBH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed.
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`Cir. 2007) (citation and internal quotation marks omitted).
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`B. Means-Plus-Function Claims
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`While only two disputed terms use the word "means," Defendant argues that
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`several other terms are means-plus-function, invoking 35 U.S.C. § 112(f). For terms
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 5 of 29 PageID #: 2495
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`not phrased with "means," there is a rebuttable presumption that those terms are
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`not means-plus-function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
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`(Fed. Cir. 2015) (en bane). "This presumption can collapse when a limitation lacking
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`the term 'means' nonetheless relies on functional terms rather than structure or
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`material to describe performance of the claimed function." Apex Inc. v. Raritan
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`Comput., Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003); see also Williamson, 792 F.3d at
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`1348 (Form is not "blindly elevated" over substance. Instead, "the essential inquiry
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`is ... whether the words of the claim are understood by persons of ordinary skill in
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`the art to have a sufficiently definite meaning as the name for structure.").
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`Defendant bears the burden of overcoming the presumption by a preponderance of
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`the evidence. Adv. Ground Info. Sys. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir.
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`2016).
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`"Construing a means-plus-function claim term is a two-step process."
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`Williamson, 792 F.3d at 1351. First, I must identify the claimed function. Id.
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`Second, I must discern and evaluate the corresponding structure. Id. at 1351-52.
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`The disclosure of a corresponding structure is a requirement of means-plus-
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`function claiming. Structure corresponds to a claimed function if "the intrinsic
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`evidence clearly links or associates that structure to the function recited in the
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`claim." Id. at 1352. "Even if the specification discloses corresponding structure, the
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`disclosure must be [adequate] to achieve the claimed function." Id.
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 6 of 29 PageID #: 2496
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`For software patents claiming a function that a general purpose computer
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`cannot perform, the specification must disclose an algorithm. Id. "The algorithm
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`may be expressed as a mathematical formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure." Id.
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`If a claim invoking § 112(£) fails to disclose an adequate corresponding
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`structure, the claim is indefinite. Id. at 1352; In re Donaldson Co., Inc., 16 F.3d
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`1189, 1195 (Fed. Cir. 1994) (en bane). Defendant bears the burden of proving the
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`claim is indefinite because of inadequate disclosure by clear and convincing
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`evidence. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).
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`II.
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`CONSTRUCTION OF DISPUTED TERMS
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`1.
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`"spin," "spinning"
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`a.
`
`b.
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`Plaintiff's proposed construction: "wait," "waiting"
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`Defendant's proposed construction: "repeatedly trying to acquire
`a lock in a tight loop; i.e., busy waiting"
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`c.
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`Court's construction: plain and ordinary meaning
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`The parties dispute the proper construction of "spin" and "spinning" as used
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`in claim 13 of U.S. Patent No. 5,991,845. Claim 13 reads:
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`13. A method for providing multiple processes with mutually exclusive access
`to a shared resource in a system having a lock associated with the shared
`resource, possession of the lock signifying exclusive access to the shared
`resource, wherein processes desiring access to the shared resource spin on the
`lock until the lock is acquired, the method comprising the steps of:
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 7 of 29 PageID #: 2497
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`maintaining a linked queue structure of data records corresponding to
`a queue of processes including processes spinning on the lock and a
`process possessing the lock, one data record per process;
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`transferring the lock from the process possessing the lock to a process
`next in the queue;
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`conducting a cleanup process if one or more processes in the queue
`have terminated, said cleanup process removing said one or more
`terminated processes from the queue and reassembling the linked
`queue structure.
`
`('845 Patent, col. 19, 11. 1-17) (emphasis added).
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`Both parties argue that the specification defines the term "spinning."
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`Plaintiff argues the specification defines "spin" or "spinning" to mean "wait" or
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`"waiting." Defendant argues the specification defines "spinning" to be "repeatedly
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`trying to acquire a lock in a tight loop; i.e., busy waiting." Both parties agree that
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`"spinning" is waiting, but the core dispute is whether it encompasses only busy-
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`waiting or also non-busy waiting. Both parties have a point.
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`The dispute focuses on a particular passage in the specification:
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`If the lock is busy, the processor attempting to acquire the lock can either
`relinquish its desire to obtain the lock so it can do other work, or it can wait
`or "spin" until the lock is released. In particular, an implementation in which
`a process repeatedly tries to acquire the lock in a tight loop is called a spin
`lock and the activity or retrying is known as "busy waiting" or simply
`"
`"
`.
`.
`spmmng.
`
`('845 Patent, col. 1, 11. 51-58).
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 8 of 29 PageID #: 2498
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`Plaintiff argues the first sentence defines "spinning" as "waiting." Plaintiff is
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`correct that the specification equates "spinning" with "waiting" here and
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`throughout. I
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`Defendant argues the patent defines "spinning" as "busy waiting" or as
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`"repeatedly trying to acquire the lock in a tight loop." Defendant relies on the
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`second sentence of the above excerpt from the specification. Defendant is partially
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`correct. This part of the specification does couple the terms "spinning" and "busy
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`waiting." More specifically, it defines "busy waiting" and "repeatedly trying to
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`acquire the lock" as "spinning."2
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`1 Plaintiff also points to other passages of the specification where "spinning" and "waiting"
`are coupled similarly to the way they are coupled here.
`2 Defendant takes it a step further and points to this as lexicography that defines the term
`"spinning." When a term is set out in quotation marks, that is "often a strong indication" the
`patentee is defining the term. Sinorgchem Co., Shandong v. Int'l Trade Comm'n, 511F.3d1132, 1136
`(Fed. Cir. 2007). Here, the term "spinning" is set out in quotation marks suggesting that the
`patentee is giving definition to it.
`There is a sequencing problem with Defendant's argument that makes this reference in the
`specification ambiguous. The patent does not say "spinning" is "repeatedly trying to acquire a lock in
`a tight loop." Instead, it says that "repeatedly trying to acquire a lock in a tight loop" is known as
`"spinning." That does not mean that other things are not also known as "spinning." That A is known
`as B does not mean Bis known as A. For example, taking a jet plane between two cities is known as
`"flying." But "flying" is not limited to taking a jet plane between two cities. The specification does not
`resolve the precise interrelationship between waiting and "spinning."
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 9 of 29 PageID #: 2499
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`Neither Plaintiffs nor Defendant's insights, however, resolve the actual
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`dispute, which is what range of waiting is connoted by the term "spinning." That
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`"spinning" is "waiting" does not mean that "spinning" is all types of waiting. That
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`"busy waiting" is "spinning" does not mean that "spinning" is (and only is) "busy
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`waiting." Thus, I reject both Plaintiffs and Defendant's argument that the
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`specification defines "spinning" in a relevant sense.
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`Having rejected the position that the specification defines "spinning," I am
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`left with the conclusion that "spinning" is used in its plain and ordinary sense. The
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`parties have offered competing expert opinions and references to prior art to
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`support conflicting positions on what the plain and ordinary meaning of"spinning"
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`is. Thus, I decline to reach a conclusion today and will hold a hearing to take expert
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`testimony on the meaning of "spinning" to a person of ordinary skill in the art.
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`2.
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`"an aging controller that monitors a measurable characteristic
`of said memory and deletes ones of said multiple versions of
`said ones of said data records in response to said time stamp
`and said measurable characteristic thereby to increase a
`capacity of said memory"
`
`a.
`
`b.
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`Plaintiff's proposed construction: no construction necessary
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`Defendant's proposed construction: means-plus-function,
`indefinite
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`c.
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`Court's construction: no construction necessary
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 10 of 29 PageID #: 2500
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`The parties dispute whether "controller" is a functional term, in particular, as
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`used in the term "aging controller ... " in claim 1 of U.S. Patent No. 6,125,371. Claim
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`1 reads:
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`1. A processing system for use with a database of data records, said database
`stored in a memory, comprising:
`
`a time stamping controller that assigns a time stamp to transactions to
`be performed on said database;
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`a versioning controller that creates multiple versions of ones of said
`data records affected by said transactions that are update transactions;
`and
`an aging controller that monitors a measurable characteristic of said
`memory and deletes ones of said multiple versions of said ones of said
`data records in response to said time stamp and said measurable
`characteristic thereby to increase a capacity of said memory.
`
`('371 Patent, col. 9, 11. 9-21) (emphasis added).
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`Because this term does not use "means," I start with the presumption that it
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`is not subject to § 112(:£). Defendant bears the burden of overcoming that
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`presumption. It has failed to do so.
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`Defendant argues that "controller" is a nonce word and that a person of
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`ordinary skill in the art would recognize a "controller" by its function, not as
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`structure; thus, the term invokes§ 112(:£). Defendant pounces on the functional
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`nature of how the class of structures known as "controllers" is defined.
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`Defendant's argument primarily relies on dictionaries. It cites a dictionary
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`that states a "controller" is, "[a]s silly as it sounds, something that controls
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 11 of 29 PageID #: 2501
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`something else." Dan Gookin & Wallace Wang, Illustrated Computer Dictionary for
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`Dummies (2d ed. 1995). That dictionary, however, goes on to describe specific
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`controllers. Id. For example, it explains that "[a] hard disk controller is the circuitry
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`that controls the hard drive, connecting it to the computer." Id. I also reviewed the
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`other cited dictionary cited by Defendant (D.I. 83-1 Ex. 12), and it does not compel a
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`finding that "controller" is a nonce term that lacks structure, nor does Defendant's
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`expert (D.I. 83-1 Ex. 15 at irir 52-54), whose assertions mainly interpret the cited
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`dictionaries and are countered by Plaintiffs expert (D.I. 83-1 Ex. X at 34-38).
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`"Controller" may be a class of structures, rather than one specific structure,
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`and may be defined with functional terms, but that does not make it means-plus-
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`function. See Personalized Media v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed.
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`Cir. 1998) ("[N]either the fact that a 'detector' is defined in terms of its function, nor
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`the fact that the term 'detector' does not connote a precise physical structure in the
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`minds of those of skill in the art detracts from the definiteness of structure.").
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`One part of the specification touches on the definition of "controller." The
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`patent reads:
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`Those skilled in the art should be familiar with the use of controllers in
`processing environments generally and, more specifically, with main memory
`databases. Controllers may be implemented in software, firmware, hardware,
`or some suitable combination of at least two of the three.
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 12 of 29 PageID #: 2502
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`('371 Patent, col. 4, 11. 52-57). I do not read this language to say "controller" is
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`anything that controls. Instead, it explains that "controller" refers to hardware
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`controllers as well as firmware and software controllers or hybrid controllers. That
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`is, "controller" connotes, not one particular type of controller, but, controllers
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`implemented in any of those mediums. That is not the same as saying a "controller"
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`is anything that controls. Put otherwise, this statement does not define the term
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`"controller" broader than the class of structures "controller" would ordinarily connote.
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`In fact, the patent stresses in that part that "controller" is used in its ordinary sense.
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`I also do not interpret the use of modifiers "time stamping," "versioning,'' and
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`"aging" as taking "controller" out of the class of known structures. Instead, I see
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`these terms as functional monikers given to distinguish between which controller is
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`being referenced.
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`Having found Defendant fails to overcome the presumption that "controller"
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`is not a functional term, I decline to construe the term because no alternative
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`constructions have been proposed by either party.
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`3.
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`"means at said server to compare said user input information
`with stored information and based on user verification and
`user access type provide said user with a list of other users for
`which said user has access"
`
`a.
`
`Plaintiff's proposed construction:
`
`Function
`"comparing said user input information
`with stored information and based on
`user verification and user access type
`providing said user with a list of other
`users for which said user has access"
`
`Structure
`"a login CGI, the system shared memory's
`simple user database, Web API, System
`API, and a drop box selection menu as
`described in col. 9:34-36 or depicted in
`Figure 13"
`
`b.
`
`c.
`
`Defendant's proposed construction: indefinite
`
`Court's construction:
`
`Function
`"comparing said user input information
`with stored information and based on
`user verification and user access type
`providing said user with a list of other
`users for which said user has access"
`
`Structure
`"a login CGI, the system shared memory's
`simple user database, Web API, System
`API, and a drop box selection menu as
`described in col. 9:34-36 or depicted in
`Figure 13"
`
`The parties agree this term is means-plus-function but dispute whether the
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`specification discloses a corresponding structure. This term comes from claim 5 of
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`U.S. Patent No. 6,732,181, which reads:
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`5. A system for providing a user of an Internet-based communication system
`selective access to information relating to other users comprising: a server
`having means to store a list of users including user access type, identification,
`password and name; a user client having means for a user to input
`identification and password information; and means at said server to compare
`said user input information with stored information and based on user
`verification and user access type provide said user with a list of other users for
`which said user has access.
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 14 of 29 PageID #: 2504
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`('181 Patent, col. 22, 11. 25-34) (emphasis added).
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`Plaintiff primarily points to the following disclosures in the specification for
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`structure: (1) "There is a drop box selection menu that allows the user to switch to
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`another customer portfolio and act as a user from that customer." (Id. at col. 9, 11.
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`34-36; see also Figure 13); (2) "The Login CGI uses the system shared memory's
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`simple user database for user access authorization. If login is successful, the CGI
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`program calls Web API, which again calls System API, to construct the users
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`welcome screen." (Id. at col. 9, 11. 60-64); (3) "The application validates the
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`information provided against the list of users stored in the application." (Id. at col.
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`12, 11. 49-51).
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`In its brief, Defendant faults the patent for failing to disclose an algorithm
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`and characterizes the cited structure as "functional components." (D.I. 82 at 44).
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`Defendant further criticizes the drop box selection menu as a "disembodied user
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`interface component." (Id. at 45). At the hearing, Defendant argued that "[n]othing
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`in [the patent] describes the step of comparing." (D.I. 89 at 57).
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`I am unpersuaded by Defendant's argument that the disclosures in the
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`specification fall short. I read the patent as both clearly connecting the cited
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`structures to the claimed function and to one another. At column 9, line 30, the
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`specification begins its discussion of internal users, which are users with the ability
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`to access multiple user profiles. It states that an internal user would be given a
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 15 of 29 PageID #: 2505
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`"modified welcome page." ('181 Patent, col. 9, 11. 33-34). The modified welcome page
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`includes a "drop box selection menu that allows the user to switch to another
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`customer portfolio .... " (Id. at 11. 34-35). In that same discussion, the specification
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`describes a "login CGI" that is "fired up" when a user enters login information. (Id.
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`at 1. 60). "The Login [C]GI uses the system shared memory's simple user database
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`for user access authorization."3 (Id. at 11. 60---63). Once the user's access has been
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`authorized, "the CGI program calls Web API, which again calls System API, to
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`construct the users welcome screen." (Id. at 11. 63-64).
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`The compare function is performed by the "Login CGI" and the "system
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`shared memory's simple user database." The "providing said user with a list of other
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`users for which said user has access" function is performed by the "Web API" and
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`the "System API," which construct the welcome screen that includes a "drop box
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`selection menu."
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`I I
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`3 At column 9, line 60 the patent says "Login QGl."(emphasis added). A text search of the
`patent turns up no other use of the term QGI. In context of that paragraph, it is clear the patent
`means Login CGI here.
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`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 16 of 29 PageID #: 2506
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`Thus, I reject Defendant's argument that the specification does not disclose
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`structure for all of the claimed functions. Defendant's assertions that these
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`components are too generic relies on cursory expert testimony (see D.I. 83-1 at 393),
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`and falls short of clear and convincing evidence that the claim is indefinite.
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`4.
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`"means to authorize log in of said user if said ID and password
`agree with said stored information and if said user status is
`enabled"
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`Plaintiff's proposed construction:
`
`Function
`"authorizing log in of said user if said
`ID and password agree with said stored
`information and if said user status is
`enabled"
`
`Structure
`"a JavaScript cookie"
`
`b.
`
`c.
`
`Defendant's proposed construction: indefinite
`
`Court's construction: indefinite
`
`The parties agree that this claim is subject to§ 112(£) but dispute whether
`
`the specification discloses sufficient structure. This term is in claim 1 of U.S. Patent
`
`No. 7,366, 786. Claim 1 reads:
`
`1. A system for authorizing a user of a client to have access to a server via the
`Internet comprising:
`
`means in said client for inputting a user identification (ID) and user
`password;
`
`means in said client for storing a unique client address;
`
`communication means at said client for passing said ID, password and
`address to said server via said Internet in response to a request
`therefrom;
`
`16
`
`
`
`I
`I
`I
`
`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 17 of 29 PageID #: 2507
`
`means at said server to store information respecting said client and to
`compare said stored information with said user ID and user password;
`
`means at said server to store dynamic status information respecting
`said user, said dynamic status information being one of enabled,
`disabled or active; and
`
`means to authorize log in of said user if said ID and password agree
`with said stored information and if said user status is enabled.
`
`('786 Patent, col. 22, 11. 5-21) (emphasis added).
`
`Function
`
`As an initial matter, Plaintiff and Defendant agree as to the claimed
`
`function. The function, as articulated by the parties, simply regurgitates the claim
`
`language, but, for the reasons that follow, I do not think the articulation is
`
`complete.
`
`The claim language requires the disclosed function to "authorize log in" if two
`
`preconditions are met. Thus, part of the function is "authorizing the log in."
`
`The two preconditions that must be met are (1) the inputted user ID and
`
`password must match the stored information and (2) the user's status must be
`
`enabled. Verification of the first precondition-matching the log in information-is
`
`performed by a different means in the claim. (Id. at 11. 13-15) (claiming "means at
`
`said server to store [log in] information ... and to compare said stored information
`
`with" the inputted log in information).
`
`Verification of the second condition is only partially completed by another
`
`claim limitation. (Id. at 11. 16-18) (claiming "means at said server to store dynamic
`17
`
`
`
`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 18 of 29 PageID #: 2508
`
`status information ... being one of enabled, disabled, or active"). No other step in the
`
`claim performs the function of actually verifying the user's status. Thus, "verifying
`
`the user's status" is necessarily a function of the claimed means.
`
`The specification confirms that the claimed means has the function of
`
`verifying the user's status. At column 13, lines 4 to 14, the patent describes the
`
`invention claimed in claim 1. It reads:
`
`For each user the application stores a user Id, a user password, status, and
`an IP address. When a user requests access to the SD application, the
`application requires the user to enter a user Id and a user password. The
`application validates the information provided against the list of users stored
`in the application. If the user name and password matches, the application
`checks the user's status in the application. If the user's status is "enabled"
`then the user is logged onto the system .... "
`
`(emphasis added). As an initial matter, it is clear this part of the patent is referring
`
`to claim 1. For one, the paragraph in full describes the limitations of claim 1 and its
`
`dependent claims. (Compare id. at col. 13, 11. 4-27 with col. 22, 11. 5-32, 38-40). For
`
`two, Plaintiff admitted as much by citing to this language to provide structure. (See
`
`D.I. 82 at 64).
`
`This portion of the specification describes checking the user's status as a
`
`discrete step, confirming it is a function of the claim that must be carried out by
`
`some means. Again, the contested limitation is the only one that relates to this step.
`
`Thus, I am construing the claimed means's function to be "authorizing log in and
`
`verifying user status as enabled."
`
`18
`
`
`
`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 19 of 29 PageID #: 2509
`
`Structure
`
`Plaintiff cites four statements and two diagrams in the specification to
`
`support its argument that the corresponding structure is "a JavaScript cookie."
`
`(Id.).
`
`It cites figures 4 and 5, but those figures do not add to the specification's
`
`language. Plaintiff also cites the following: (1) "It checks the user Id and password
`
`against the list stored in the application. It sends out a JavaScript cookie to the
`
`client after the user Id and password are validated." ('786 Patent, col. 13, 11. 34-36);
`
`(2) "If the client is authorized the server returns a welcome page together with a
`
`JavaScript cookie, which contains the user Id, to the client." (Id. at 11. 51-53); and
`
`(3) "The JavaScript cookie expires at the end of the session i.e. logout or browser
`
`terminated." (Id. at 11. 57-58).
`
`Plaintiffs reliance on the JavaScript cookie for structure is vulnerable to
`
`sequencing criticisms. The specification reads, "If the client is authorized the server
`
`returns a welcome page together with a JavaScript cookie .... " This passage is
`
`troublesome for Plaintiff. If the JavaScript cookie performs the function of
`
`authorizing, then why does it come after the client is authorized? The specification
`
`can still be read, however, to support the notion that the JavaScript cookie is the
`
`structure for the authorizing function.
`
`19
`
`
`
`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 20 of 29 PageID #: 2510
`
`Authorized, as used in the specification, can be read as saying 'if the
`
`preconditions are met' the JavaScript cookie is sent out. Authorized in this sense
`
`means "allowed;" whereas, authorizing in the claim language can be read to mean
`
`"to give permission."
`
`Even so, Plaintiff still has a sequencing problem. Even with a generous
`
`reading of the specification, the JavaScript cookie does not have a role until after
`
`the preconditions are met. The JavaScript cookie, therefore, is not the structure
`
`performing the function of verifying the user's status. Plaintiff cites no other
`
`structure. Thus, this is a means-plus-function term with no corresponding
`
`structure, and the claim is therefore indefinite.
`
`5.
`
`"receiving message data of a first type containing the contents
`of a first message over the open message connection"
`
`a.
`
`b.
`
`c.
`
`Plaintiff's proposed construction: no construction necessary
`
`Defendant's proposed construction: indefinite
`
`Court's construction: indefinite
`
`When an apparatus claim recites a method step, the claim is indefinite under
`
`§ 112(b). IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
`
`2005). IPXL indefiniteness arises when a person of ordinary skill in the art would
`
`be unable to tell if the apparatus itself would infringe or if the apparatus would
`
`have to be used in a certain way to infringe.
`
`20
`
`
`
`Case 1:16-cv-00116-RGA Document 100 Filed 05/19/17 Page 21 of 29 PageID #: 2511
`
`Defendant argues that claim 19 of U.S. Patent No. 7,412,486 is indefinite
`
`under IPXL. Claim 19 reads:
`
`A messaging system comprising:
`
`a messaging client;4
`
`a messaging server;
`
`a computer network coupling the messaging client and the messaging server;
`
`the messaging client configured to:
`
`establish a message connection with the messaging server over the
`computer network using only hypertext-related protocols and a simple
`scripting language;
`
`receive a message connection response from the server indicating that
`the message connection is an open message connection;
`
`receiving message data of a first type containing the contents of a first
`message over the open message connection;
`
`receiving message data of a second type containing the contents of a
`second message over the open message connection;
`
`repeating the steps of receiving message data while maintaining the
`open message connection and while awaiting delivery of a message
`termination indicator indicating that a message associated with the
`message connection has been completely received by the messaging
`client;
`
`the messaging server configured to:
`
`4 De
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