Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 1 of 25 PageID #: 24062
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No. 16-453-RGA
`
`Civil Action No. 16-454-RGA
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD, INC.
`
`Defendant.
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ELECTRONIC ARTS INC.
`
`Defendant.
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKST AR GAMES, INC., AND 2K
`SPORTS, INC.
`
`Defendants.
`
`Civil Action No. 16-455-RGA
`
`MEMORANDUM OPINION
`
`Philip A. Rovner, Jonathan A. Choa, POTTER ANDERSON & CORROON LLP, Wilmington,
`DE; Paul J. Andre, Lisa Kobialka, James R. Hannah (argued), Hannah Lee, KRAMER LEVIN
`NAFTALIS & FRANKEL LLP, Menlo Park, CA; Aaron M. Frankel (argued), KRAMER
`LEVIN NAFTALIS & FRANKEL LLP, New York, NY.
`
`

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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 2 of 25 PageID #: 24063
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`Attorneys for Plaintiff.
`
`Jack B. Blumenfeld, Stephen J. Kraftschik, MORRIS, NICHOLS, ARSHT & TUNNEL LLP,
`Wilmington, DE; Michael A. Tomasulo (argued), Gino Cheng, David K. Lin, Joe S. Netikosol,
`WINSTON & STRAWN LLP, Los Angeles, CA; Michael M. Murray (argued), WINSTON &
`STRAWN LLP, New York, NY; David P. Enzminger, WINSTON & STRAWN LLP, Menlo
`Park, CA; Dan K. Webb, Kathleen B. Barry, WINSTON & STRAWN LLP, Chicago, IL.
`
`Attorneys for Defendants.
`
`December~, 2017
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 3 of 25 PageID #: 24064
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`Presently before me is the issue of claim construction of multiple terms in U.S. Patent
`
`No. 6,701,344 ("the '344 patent"), U.S. Patent No. 6,714,966 ("the '966 patent"), U.S. Patent
`
`No. 6,829,634 ("the '634 patent"), U.S. Patent No. 6,910,069 ("the '069 patent"), and U.S.
`
`Patent No. 6,732,147 ("the '147 patent"). I have considered the parties' Joint Claim
`
`Construction Brief(D.I. 281). 1 I issued an Order and Stipulation Regarding Supplemental Claim
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`Construction Briefing, pursuant to which the parties address terms 27, 29-34, and 38-40. (D.I.
`
`206; D.I. 215). I held oral argument on November 21, 2017. (D.I. 363 ("Tr.")).
`
`I.
`
`LEGAL STANDARD
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`"It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "'[T]here is no magic formula or
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`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
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`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
`
`SofiView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
`
`415 F.3d at 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. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
`
`(1996). Of these sources, "the 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."
`
`Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
`
`1 Citations to "D.I. _" are to the docket in C.A. No. 16-453 unless otherwise noted.
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 4 of 25 PageID #: 24065
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`"[T]he words of a claim are generally given their ordinary and customary meaning ....
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`[Which is] the meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the patent application."
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`Id. at 1312-13 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a
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`claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
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`(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
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`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
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`construction in such cases involves little more than the application of the widely accepted
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`meaning of commonly understood words." Id. at 1314.
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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 determination oflaw.
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`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
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`make factual findings based upon consideration of extrinsic evidence, which "consists of all
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`evidence external to the patent and prosecution history, including expert and inventor testimony,
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`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist
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`the court in understanding the underlying technology, the meaning of terms to one skilled in the
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`art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less
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`useful in claim 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 because it
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`defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa 'per
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`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would
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`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) (citation omitted).
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 5 of 25 PageID #: 24066
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`II.
`
`BACKGROUND
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`The following claims are the most relevant for the purposes of this Markman.
`
`Claim 11 of the '147 Patent
`
`11. A computer-readable medium containing instructions for controlling
`disconnecting of a computer from another computer, the computer and other
`computer being connected to a broadcast channel, said broadcast channel being an
`m-regular graph where mis at least 3, comprising:
`
`a component that, when the computer decides to disconnect from the other
`computer, the computer sends a disconnect message to the other computer, said
`disconnect message including a list of neighbors of the computer; and
`
`a component that, when the computer receives a disconnect message from another
`computer, the computer broadcasts a connection port search message on the
`broadcast channel to find a computer to which it can connect in order to maintain
`an m-regular graph, said computer to which it can connect being one of the
`neighbors on said list of neighbors.
`
`(D.1. 117-2, Exh. A-3('"147 patent"), claim 11) (emphasis added).
`
`Claim 1 of the '069 Patent
`
`1. A computer-based, non-routing table based, non-switch based method for
`adding a participant to a network of participants, each participant being
`connected to three or more other participants, the method comprising:
`
`identifying a pair of participants of the network that are connected wherein a
`seeking participant contacts a fully connected portal computer, which in turn
`sends an edge connection request to a number of randomly selected neighboring
`participants to which the seeking participant is to connect;
`
`disconnecting the participants of the identified pair from each other; and
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`connecting each participant of the identified pair of participants to the seeking
`participant.
`
`(D.1. 117-2, Exh. A-5 ('"069 patent"), claim 1) (emphasis added).
`
`Claim 1 of the '344 Patent
`
`1. A computer network for providing a game environment for a plurality of
`participants, each participant having connections to at least three neighbor
`participants, wherein an originating participant sends data to the other
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`participants by sending the data through each of its connections to its neighbor
`participants and wherein each participant sends data that it receives from a
`neighbor participant to its other neighbor participants, further wherein the
`network is m-regular, where m is the exact number of neighbor participants of
`each participant and further wherein the number of participants is at least two
`greater than m thus resulting in a non-complete graph.
`
`(D.I. 117-2, Exh. A-1 ("'344 patent"), claim 1) (emphasis added).
`
`Claim 13 of the '344 Patent
`
`13. A distributed game system comprising:
`
`a plurality of broadcast channels, each broadcast channel for playing a game, each of the
`broadcast channels for providing game information related to said game to a plurality of
`participants, each participant having connections to at least three neighbor participants,
`wherein an originating participant sends data to the other participants by sending the data
`through each of its connections to its neighbor participants and wherein each participant
`sends data that it receives from a neighbor participant to its neighbor participants,
`further wherein the network is m-regular, where m is the exact number of neighbor
`participants of each participant and further wherein the number of participants is at least
`two greater than m thus resulting in a non-complete graph;
`
`means for identifying a broadcast channel for a game of interest; and
`
`means for connecting to the identified broadcast channel.
`
`('344 patent, claim 13) (emphasis added).
`
`Claim 19 of the '634 Patent
`
`13. A non-routing table based computer-readable medium containing instructions for
`controlling communications of a participant of a broadcast channel within a network, by a
`method comprising:
`
`locating a portal computer;
`
`requesting the located portal computer to provide an indication of neighbor participants
`to which the participant can be connected;
`
`receiving the indications of the neighbor participants; and
`
`establishing a connection between the participant and each of the indicated neighbor
`participants, wherein a connection between the portal computer and the participant is not
`established, wherein a connection between the portal computer and the neighbor
`participants is not established, further wherein the network is m-regular and m-connected,
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`where m is the number of neighbor participants of each participant, and further wherein
`the number of participants is at least two greater than m thus resulting in a non-complete
`graph.
`
`(D.I. 117-2, Exh. A-4 ('"634 patent"), claim 19) (emphasis added).
`
`III.
`
`TERMS FOR CONSTRUCTION
`
`1. Term 27: "computer readable medium" ('634/19, 22, and '147/11, 14, 15, 16)
`
`a. Plaintiff's proposed construction: "a non-fleeting medium for storing instructions and
`data that a computer can read, such as hard disks, random access memory, read only
`memory, DVDs, USB drives"
`
`b. Defendants' proposed construction: "any medium for storing or transporting computer
`readable instructions, including memory, storage devices, carrier waves and
`communications links"
`
`c. Court's construction: "any medium for storing or transporting computer readable
`instructions, including memory, storage devices, carrier waves, and communications
`links"
`
`The parties agree that the term "computer readable medium" covers media for storing
`
`instructions and data such as hard disks and memory storage devices. (D.I. 281 at 4).
`
`The parties also agree that, by itself, the term "computer readable medium" covers
`
`transitory, or "fleeting," media. Plaintiff agrees that a carrier wave is one type of transitory
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`"computer readable medium." (Tr. at 68:4-13; Tr. at 90:6-7; D.I. 281at4). A USPTO definition
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`of"computer readable medium," offered by Defendants, is to the same effect. (DJ. 281 at 7). It
`
`states that "computer readable medium" "typically covers forms of non-transitory tangible media
`
`and transitory propagating signals per se." (D.I. 282-1, Exh. G-1 ).
`
`However, Plaintiff argues that given its context in the claims, "computer readable
`
`medium" must not cover transitory, or "fleeting," media such as carrier waves. (D.I. 281 at 4).
`
`The "computer readable medium" claim language is followed by "containing instructions for
`
`controlling disconnecting of a computer from another computer." Thus, Plaintiff characterizes
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`the fundamental issue as being whether the "computer readable medium" can control the
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`network. (Tr. at 65:14-17; 66:24). Plaintiff argues that carrier waves cannot control the network
`
`or carry data to control the network, and that my construction therefore cannot include carrier
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`waves and other transitory media. (Id.; D.I. 281 at 10-11).
`
`The parties agree that a carrier wave is a "computer-readable medium containing
`
`instructions." Defendants argue "carrier waves ... store instructions while the wave is being
`
`transmitted," citing their expert. (D .I. 281 at 9). Plaintiff agrees that a carrier wave can store
`
`instructions during transmission. (Tr. at 65: 18-19; 88 :5-8). Plaintiff qualifies its agreement only
`
`by saying carrier waves must be "decoded" before the instructions can control "disconnecting of
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`a computer from another computer." (Tr. at 88:10-14).
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`The claim language indicates that those instructions are what ultimately control
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`"disconnecting of a computer from another computer." It does not require, as Plaintiff argues,
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`carrier waves to control the network.
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`Thus, a carrier wave is a "computer readable medium containing instructions for
`
`controlling" the network. The context of "computer readable medium" in the claims does not
`
`require that "computer readable medium" excludes transitory media. I accordingly adopt
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`Defendants' proposed construction.
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`The specification establishes that a "communications link" is a computer-readable
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`medium on which data structures and message structures may be stored or transmitted, and that
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`"memory and storage device~" are another type of computer-readable media. ('634 patent at
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`16:30-36); (D.1. 281 at 6, 12). It is entirely consistent with my construction.
`
`Defendants cite Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294 (Fed.
`
`Cir. 2017), in which the Federal Circuit found that a "computer readable medium containing
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`instructions" included carrier waves and thus was invalid under§ 101. But in Mentor Graphics,
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`the patent specification expressly defined "the computer readable medium" as including carrier
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`waves. Id. Here, the specification never mentions carrier waves. Thus, I am not persuaded that
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`Mentor Graphics confirms my conclusion that "computer readable medium containing
`
`instructions" includes carrier waves.
`
`2. Term 29: "fully connected portal computer," "located portal computer" ('634/19 and
`'069/1)
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`a. Plaintiff's proposed construction:
`
`fully connected portal computer: "a completely connected portal computer"
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`located portal computer: "an identified portal computer"
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`b. Defendants' proposed construction: "a portal computer connected to exactly m
`neighboring participants of the network"
`
`c. Court's construction:
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`fully connected portal computer: "portal computer connected to exactly m neighbor
`participants"
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`located portal computer: "portal computer connected to exactly m neighbor participants"
`
`The parties do not dispute the meaning of "portal computer." They agree that a portal
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`computer arranges for other computers to have neighbors. (Tr. at 96:21-23; 113:14-18). The
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`parties do, however, dispute the meaning of both "fully connected" and "located" when
`
`modifying "portal computer." Their dispute centers on whether the portal computer must be
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`connected to m and only m computers.
`
`A patentee is free to be its own lexicographer. Phillips v. A WH Corp., 415 F.3d 1303,
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`1316 (Fed. Cir. 2005) (en bane). The patent specifications provide for three "regimes": seeking,
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`partially connected, and fully connected. ('634 patent at 5:45-51, 6:5-12; '069 patent at 5:47-
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 10 of 25 PageID #: 24071
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`54). A computer in the "fully connected" regime "is currently, or has [been previously,]
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`connected to [m] neighbors." (Id.). This is lexicography.
`
`Thus, the patent specifications generally define the "fully connected" regime as existing
`
`when the network ism-regular, and each participant has m internal connections.
`
`However, the claim language and specification provide for a "small regime" exception.
`
`The "small regime" exists where fewer than m+ 1 computers are connected, and each computer
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`has fewer than m connections. ('634 patent at 5:51-54; '069 patent at 5:26-30). In contrast, the
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`"large regime" exists where at least m+ 1 computers are connected, and each computer has m
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`connections. ('634 patent at 5:55-59; '069 patent at 5:30-32). The exception applies, and the
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`network is both "fully connected" and in the "small regime," when a computer was "previously
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`connected" to m neighbors, but the network dwindles in size to fewer than m+ 1 computers.
`
`The small regime exception is not what is claimed in either the '634 or '069 patent.
`
`The relevant '634 patent claim provides explicitly for an "m-regular network." ('634
`
`patent, claim 19). By definition, the small regime is not m-regular, because it exists where fewer
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`than m+ 1 computers are connected, and each computer has fewer than m connections. Thus,
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`claim 19 of the '634 patent requires the large regime, where "the network ism-regular," meaning
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`a given computer is "connected to exactly m neighbor participants."
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`The '069 claim language does not provide explicitly for an m-regular network.
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`Accordingly, Plaintiff argues the doctrine of claim differentiation means that my construction
`
`should not require that the network be m-regular. (Tr. at 16:8-17; 111:10-13). See Andersen
`
`Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1369-70 (Fed. Cir. 2007) ("different words or
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`phrases used in separate claims are presumed to indicate that the claims have different meanings
`
`and scope").2
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`But "powerful evidence to the contrary" can overcome this presumption. Id. at 1370.
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`Such "powerful evidence" exists here.
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`First, the claim language provides that the portal computer "sends an edge connection
`
`request to a number of randomly selected neighboring participants." This language refers to the
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`"random walk," which occurs only in the large regime. ('069 patent at 19:60-65).
`
`The specification's teaching that the random walk must occur in the large regime appears
`
`in an embodiment. The Court is mindful of the restriction against reading a limitation into a
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`claim from the specification. See Phillips, 415 F.3d at 1323. The Court also recognizes that
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`"there is sometimes a fine line between reading a claim in light of the specification, and reading
`
`a limitation into the claim from the specification." Comark Commc'ns, Inc. v. Harris Corp., 156
`
`F.3d 1182, 1186 (Fed. Cir. 1998); see also Phillips, 415 F.3d at 1323 ("[W]e recognize that the
`
`distinction between using the specification to interpret the meaning of a claim and importing
`
`limitations from the specification into the claim can be a difficult one to apply in practice."). But
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`"interpreting what is meant by a word in a claim is not to be confused with adding an extraneous
`
`limitation," only the latter of which "is improper." Storage Tech. Corp. v. Cisco Sys., Inc., 329
`
`F.3d 823, 831 (Fed. Cir. 2003) (internal quotations and citations omitted). All references to the
`
`random walk indicate that, regardless of embodiment, the random walk must occur only in the
`
`large regime. (See, e.g., '069 patent at 13:36-54, 19:60-65).
`
`2 The Federal Circuit has applied the doctrine of claim differentiation both within a single patent and within
`a family of patents. In Andersen Corp., the court analyzed claim differentiation within the "Group I patents," which
`all stemmed from continuations based on a single application. Andersen Corp., 474 F.3d at 1368-70. Likewise, the
`patents-in-suit share a specification. (Tr. at 10: 14-2 I).
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`Second, Plaintiff told the PTAB that the '069 patent "is directed to 'incomplete
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`networks,' in which each participant is connected to fewer than all of the other participants in the
`
`network." (D.I. 359-1, Exh. Lat 13-14). The smallest size an incomplete network can be is
`
`m+2, where the network ism-regular and each computer has m connections. This statement
`
`amounts to a "clear and unmistakable disclaimer" of networks that are not incomplete. Aylus
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`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360-61 (Fed. Cir. 2017) (holding that "statements
`
`made by patent owners during an IPR can be considered for prosecution disclaimer"); Omega
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`Eng'g, Inc. v. RaytekCorp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) ("for prosecution disclaimer to
`
`attach ... the alleged disavowing actions or statements made during prosecution must be both
`
`clear and unmistakable.").
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`Thus, both claims require the large regime, and a "fully connected" computer is
`
`"connected to exactly m neighbor participants."
`
`The "fully connected" lexicography is not tied directly to the "portal computer" in the
`
`specification. Nonetheless, because "fully connected" precedes "portal computer" in the claim
`
`language, the lexicography must modify "portal computer." Accordingly, I adopt "portal
`
`computer connected to exactly m neighbor participants" as my construction for "fully connected
`
`portal computer."
`
`Defendants aver that "fully connected" and "located" mean the same thing, and the terms
`
`should be therefore be construed the same way. (D.I. 281 at 35). "Located" appears in claim 19
`
`of the '634 patent but not in claim 1 of the '069 patent.
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`First, Defendants note that Plaintiff argued to the PTAB that the "seeking computer ...
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`locates and contacts a portal computer that is fully connected to the network" "[i]n order to join
`
`an existing network." (D.I. 120-1, Exh. D-10 at 6-7). Plaintiff is bound to "clear and
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 13 of 25 PageID #: 24074
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`unmistakable" disclaimers made during IPR proceedings. Aylus Networks, Inc., 856 F.3d at
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`1360-61; Omega Eng'g, Inc. v. RaytekCorp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). But this
`
`"disclaimer" appears as a passing reference in the background section of the Patent Owner
`
`Preliminary Response. It does not necessarily capture the full nuance of the technology. Thus,
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`the statement does not disclaim connection to a "portal computer" that is not "fully connected."
`
`Defendants also point to two parts of the '634 patent specification, which Defendants say
`
`demonstrate that "located" is the same as "fully connected." First, Defendants note that "the
`
`computer seeking connection first locates a computer that is currently fully connected to the
`
`broadcast channel," and the "found portal computer then directs the identifying of four
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`computers (i.e., to be the seeking computer's neighbors) to which the seeking computer is to
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`connect." ('634 patent at 5:45-49, 5:67-6:3). These statements describe the invention as a
`
`whole, rather than a particular embodiment. Second, Defendants note that "[w]hen a seeking
`
`computer locates a portal computer that is itself not fully connected, the two computers do not
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`connect." ('634 patent at 13:29-34). Likewise, this statement describes the invention as a whole.
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`Furthermore, as established, claim 19 of the '634 patent requires the large regime. The
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`specification provides that the "portal computer" is itself connected to the broadcast channel.
`
`('634 patent at 13:29-34). Thus, the "located portal computer" is a participant in the large
`
`regime network, and is "connected to exactly m neighbor participants."
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`As a result of this large regime requirement and these parts of the '634 patent
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`specification, I give "located portal computer" the same construction as "fully connected" portal
`
`computer. I use "connected to exactly m neighbor participants," rather than Defendants'
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`proposed "connected to exactly m neighboring participants of the network," to be consistent with
`
`my construction for "m-regular."
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`3. Term 30: "each participant being connected to three or more other participants"
`('069/1)
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`a. Plaintiff's proposed construction: "each participant is connected to at least three other
`participants in the network"
`
`[See constructions of "participant," "connected," and "network"]
`
`b. Defendants' proposed construction: "each participant being connected to the same
`number of other participants, where the number is three or more"
`
`c. Court's construction: "each participant being connected to the same number of other
`participants in the network, where the number is three or more"
`
`The parties agree that each participant must be connected to at least three other
`
`participants. (D.I. 281 at 36). They dispute whether each participant must have the same
`
`number of connections. (Id.). 3
`
`Plaintiff makes two primary arguments.
`
`First, Plaintiff argues that the plain language of claim 1 of the '069 patent does not
`
`explicitly require an m-regular network. (Tr. at 16:8-17). Other claims in the related patents,
`
`like claim 19 of the '634 patent, do explicitly require an m-regular network. Thus, argues
`
`Plaintiff, the doctrine of claim differentiation requires that claim 1 of the '069 patent not be
`
`construed to mandate an m-regular network. (Id.; see Andersen Corp., 474 F.3d at 1369-70
`
`("different words or phrases used in separate claims are presumed to indicate that the claims
`
`have different meanings and scope")).
`
`Even though the claim does not explicitly require the network to be m-regular, my
`
`construction of term 29 requires that the '069 patent network is in the large regime. In the large
`
`3 At oral argument, Defendants argued that Plaintiff's brief has conceded this dispute. I too thought
`Plaintiff had conceded the dispute. But in view of my conclusion, I need not reach the issue. (Tr. at 21:3-19).
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 15 of 25 PageID #: 24076
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`regime, the network ism-regular, and in an m-regular network, every participant is connected to
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`the same number of participants.
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`Furthermore, the language of claim 1 of the '069 patent indicates that it is a method "for
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`adding a participant to a network." To make sure that some participants do not have more
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`connections than others, the claim requires that when a new participant makes connections to
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`existing participants, other connections are broken so that each participant maintains the same
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`number of connections. (D.I. 281 at 38).
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`Second, Plaintiff argues that computers can be connected to multiple channels at the same
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`time. (D.I. 281 at 40; Tr. at 22:4-8). Thus, a computer connected to multiple channels must have
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`more connections than a computer only connected to one channel. This argument falls short,
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`however, because the claim is directed to a single network, or channel. The parties agree that
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`"network" and "broadcast channel" possess the same meaning in this context. (Tr. at 148:21-22;
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`149:2-4). Thus, the only connections that count are those in the "network" or "broadcast
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`channel" at issue.
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`My construction therefore requires that "each participant be[] connected to the same
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`number of other participants in the network, where the number is three or more." I add the
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`language "in the network," as I proposed in an oral order (D.I. 358), to account for the fact that
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`I [
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`the claim is directed to a single network.
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`4. Term 31: "sends an edge connection request to a number of randomly selected
`neighboring participants to which the seeking participant is to connect" ('069/1)
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`a. Plaintiff's proposed construction: "sending a message to randomly selected computers
`and/or computer processes in the network with which the participant can be connected"
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`b. Defendants 'proposed construction: "sends a message from the fully connected portal
`computer through a number of randomly selected connections until fully connected
`participants are identified to which the seeking participant is to connect"
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 16 of 25 PageID #: 24077
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`c. Court's construction: "sends a message through a number of randomly selected
`connections until fully connected participants are identified to which the seeking
`participant is to connect"
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`To reduce "elongation" (Tr. at 142:17-20), the patents use a random selection
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`process when adding computers to the network. ('069 patent at 6:63-7:6).
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`Defendants argue that their proposal properly embodies the sequence of this
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`"random walk," whereas Plaintiffs construction would improperly permit sending a
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`message after the computers are randomly selected. (D.I. 281 at 43).
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`In an embodiment, the specification of the '069 patent describes the "random
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`walk through the graph that represents the broadcast channel": "[t]o select the four
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`computers, a portal computer sends an edge connection request message through one of
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`its internal connections that is randomly selected. The receiving computer again sends
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`the edge connection request through one of its internal connections that is randomly
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`selected." ('069 patent at 13:36-43).
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`The Federal Circuit has "cautioned against reading limitations into a claim from
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`the preferred embodiment described in the specification, even if it is the only
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`embodiment described." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369-70 (Fed.
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`Cir. 2004).
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`But in a statement to the PTAB, Plaintiff generalized the embodiment's
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`description of the random walk to the '069 patent as a whole. Plaintiff cited the
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`embodiment in its Patent Owner Preliminary Response as evidence that "the '069 patent
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`describes a 'random selection technique to identify' neighbors." (D.I. 120-1, Exh. D-9 at
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`9-10). This generalization occurs in the background section of the Response. But it is
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`not general background information (or a passing reference). Rather, the generalization
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`Case 1:16-cv-00455-RGA Document 345 Filed 12/20/17 Page 17 of 25 PageID #: 24078
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`is essential to the Patent Owner's argument, and depicts a "clear and unmistakable"
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`understanding that the "random walk" applies to the '069 patent as a whole. (D.I. 120-1,
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`Exh. D-9 at 21). Plaintiff is bound to its description of the invention. See Aylus
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`Networks, Inc., 856 F.3d at 1360-61.
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`Plaintiffs proposed construction, unlike Defendants', reads the "edge connection
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`request" out of the claim by failing to explain how the "random walk" happens.
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`Accordingly, I adopt Defendants' proposed construction, absent one superfluous phrase.
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`5. Term 32: "connection port search message" ('147/1, 11)
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`a. Plaintiff's proposed construction: "message that searches for a connection port"
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`b. Defendants' proposed construction: "a message sent to locate a computer with less than
`m neighbors to which the computer sending the message can connect"
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`c. Court's construction: "message sent to locate a computer with less than m neighbors"
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`Claim 11 of the '14 7 patent provides that upon reception of "a disconnect message" from
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`a disconnecting computer, "the computer broadcasts a connection port search message on the
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`broadcast channel to find a computer to which it can connect in order to maintain an m-regular
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`graph." The purpose of the "connection port search message" is to locate the disconnecting
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`computer's former neighbors, to which the "connection port search message" sending computer
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`can connect in order to maintain m connections.
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`Plaintiff argues that the broadcast message is sent to a network that is m-regular, and the
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`nodes "are still m-connected at that point." (Tr. at 146:1-8).4 This fact is irrelevant. The plain
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`language of the claims establishes that the purpose of the connection port search message is to
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`4 Plaintiffs oral argument was different than its argument in briefing. In briefing, Plaintiff argued that
`Defendants' construction is "unhelpful" because it "misleadingly suggests that the message