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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 1 of 23 PageID #: 24505
`
`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.
`
`ACTNISION 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, Alan Silverstein, 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.
`
`

`

`. '
`
`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 2 of 23 PageID #: 24506
`
`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, 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; Thomas M. Dunham
`(argued), Andrew R. Sommer, WINSTON & STRAWN LLP, Washington, DC; Krista M. Enns,
`WINSTON & STRAWN LLP, San Francisco, CA.
`
`Attorneys for Defendants.
`
`I • i I
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`!
`!
`I
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`I I
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`JanuaryJ1, 2018
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`2
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 3 of 23 PageID #: 24507
`
`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"), U.S. Patent
`
`No. 6,732,147 (the '"147 patent"), and U.S. Patent No. 6,920,497 (the "'497 patent"). I have
`
`considered the parties' Joint Claim Construction Brief. (D.I. 366). 1 I issued an Order and
`
`Stipulation Regarding Supplemental Claim Construction Briefing, pursuant to which the parties
`
`address terms 9, 10, 21, 24-26, 28, and 37. (D.I. 206; D.I. 215). I held oral argument on
`
`December 18, 2017. (D.I. 391 ("Tr.")).
`
`I.
`
`LEGAL ST AND ARD
`
`"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. A WH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "'[T]here is no magic formula or
`
`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
`
`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
`
`SoftView 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
`
`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.l.
`
`"are to the docket in C.A. No. 16-453.
`
`3
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`

`

`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 4 of 23 PageID #: 24508
`
`"[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 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a
`
`claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
`
`(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
`
`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words." Id. at 1314.
`
`When a court relies solely upon the intrinsic evidence-the patent claims, the
`
`specification, and the prosecution history-the court's construction is a determination oflaw.
`
`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
`
`make factual findings based upon consideration of extrinsic evidence, which "consists of all
`
`evidence external to the patent and prosecution history, including expert and inventor testimony,
`
`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist
`
`the court in understanding the underlying technology, the meaning of terms to one skilled in the
`
`art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less
`
`useful in claim construction than the patent and its prosecution history. Id.
`
`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent." 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 'l Trade
`
`Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).
`
`4
`
`

`

`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 5 of 23 PageID #: 24509
`
`II.
`
`BACKGROUND
`
`The following claims are the most relevant for the purposes of this Markman.
`
`Claim 1 of the '147 Patent
`
`1. A method of disconnecting a first computer from a second computer, the first computer
`and the second computer being connected to a broadcast channel, said broadcast
`channel forming an m-regular graph where m is at least 3, the method comprising:
`
`when the first computer decides to disconnect from the second computer, the first
`computer sends a disconnect message to the second computer, said disconnect message
`including a list of neighbors of the first computer; and
`
`when the second computer receives the disconnect message from the first computer, the
`second computer broadcasts a connection port search message on the broadcast channel
`to find a third computer to which it can connect in order to maintain an m-regular graph,
`said third computer being one of the neighbors on said list of neighbors.
`
`(D.I. 117-2, Exh. A-3('"147 patent"), claim 11) (emphasis added).
`
`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.
`
`('147 patent, claim 11) (emphasis added).
`
`Claim 15 of the '147 Patent
`
`15. The computer-readable medium of claim 11 wherein the computers that are
`connected to the broadcast channel are peers.
`
`('147 patent, claim 15) (emphasis added).
`
`5
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`

`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 6 of 23 PageID #: 24510
`
`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 tum
`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
`
`connecting each participant of the identified pair of participants to the seeking
`participant.
`
`(D.I. 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 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(cid:173)
`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).
`
`Claim 12 of the '344 Patent
`
`12. The computer network of claim 1 wherein the inter-connections of participants form a
`broadcast channel for a game of interest.
`
`('344 patent, claim 12) (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
`
`6
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 7 of 23 PageID #: 24511
`
`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 ism-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 ism-regular and m-connected,
`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).
`
`Claim 9 of the '497 Patent
`
`9. A component in a computer system for locating a call-in port of a portal computer,
`comprising:
`
`means for identifying the portal computer, the portal computer having a dynamically
`selected call-in port for communicating with other computers;
`
`7
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 8 of 23 PageID #: 24512
`
`means for identifying the call-in port of the identified portal computer by repeatedly
`trying to establish a connection with the identified portal computer through contacting a
`communications port or communications ports until a connection is successfully
`established;
`
`means for selecting the call-in port of the identified portal computer using a port ordering
`algorithm; and
`
`means for re-ordering the communications ports selected by the port ordering algorithm.
`
`(D.I. 117-2, Exh. A-6 ("'497 patent"), claim 9) (emphasis added).
`
`III.
`
`TERMS FOR CONSTRUCTION
`
`1. Term 9: "computer network" ('344/12; '966/12)
`
`a. Plaintiff's proposed construction: "a group of connected computers and/or computer
`processes"
`
`b. Defendants' proposed construction: "at least two physical computers that are
`interconnected"
`
`c. Court's construction: "group of connected computers or group of connected computer
`processes"
`
`Term 9 appears in claim 12 of the '344 patent and claim 12 of the '966 patent, which
`
`cover, "The computer network of claim 1 wherein the interconnections of participants form a
`
`broadcast channel for a game of interest," and "The computer network of claim 1 wherein the
`
`interconnections of participants form a broadcast channel for a topic of interest," respectively.
`
`The parties' dispute boils down to whether "participants" in a "computer network" must
`
`be physical "computers," as Defendants argue, or whether "participants" in a "computer
`
`network" may be either physical "computers" or "computer processes," as Plaintiff argues. (D.I.
`
`366 at 4).
`
`To support its position, Plaintiff points to the language of dependent claims which further
`
`describe the "computer network." (D.I. 366 at 11; Tr. at 34:19-23). Claim 9 covers, "The
`
`computer network of claim 1 wherein each participant is a process executing on a computer."
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 9 of 23 PageID #: 24513
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`('344 patent, claim 9; '966 patent, claim 9). 2 Claim 10 covers, "The computer network of claim
`
`1 wherein a computer hosts more than one participant." ('344 patent, claim 10; '966 patent,
`
`claim 10).
`
`Together, the language of claims 9 and 10 indicates that at least two "participants" in a
`
`"computer network" may be "computer processes" that exist on a single "computer." Given that
`
`the patent does not teach otherwise, if two "participants" in a "computer network" may be
`
`"computer processes" that exist on a single computer, there is no reason why all "participants" in
`
`a "computer network" cannot be "computer processes" that exist on a single "computer."
`
`Accordingly, the "computer network" is not limited to "at least two physical computers which
`
`are interconnected," but can include either a "group of connected computers or group of
`
`connected computer processes."
`
`Defendants' arguments to the contrary are unavailing.
`
`First, Defendants note that an explicit advantage of the claimed "computer network" is
`
`that the failure of a single computer will not divide the graph because "it would take a failure of
`
`[m] computers to divide the graph into disjoint sub-graphs, [that is,] two separate broadcast
`
`channels." ('344 patent at 4:30-46). This advantage, argue Defendants, shows that the
`
`"computer network" must consist of "physical computers." (D.I. 366 at 12). However, just
`
`because this benefit exists when the "computer network" is made up of "computers," but not
`
`when it is made up of"computer processes," does not mean I must construe "computer network"
`
`so as to exclude "computer processes."
`
`Second, Defendants point to a statement from Plaintiff's expert that the "computer
`
`network could comprise ... either multiple computers ... or software application programs
`
`2 The '344 and '966 patents have identically-worded dependent claims 9 and 10.
`
`9
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`

`

`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 10 of 23 PageID #: 24514
`
`operating on multiple separate hardware platforms." (Tr. at 26:3-10). Defendants also highlight
`
`a treatise, which defines "computer network" "to mean an interconnected collection of
`
`autonomous computers." (D.I. 366 at 5) (emphasis added). These pieces of extrinsic evidence
`
`demonstrate that in some contexts, a "computer network" must consist of "computers."
`
`However, they are outweighed by intrinsic evidence which shows that "computer network" need
`
`not be so limited in the context of the patents.
`
`Finally, Defendants argue that the term "computer network" must be differentiated from
`
`another term used in the patents, "network." (D.1. 366 at 13-14). However, Defendants have
`
`failed to provide evidence that differentiating these terms requires construing "computer
`
`network" as "at least two physical computers that are interconnected," and thus have failed to
`
`overcome the intrinsic evidence demonstrating that a "computer network" is a "group of
`
`connected computers or group of connected computer processes."
`
`2. Term 10: "network" ('344/13; '966/13)
`
`a. Plaintiff's proposed construction:
`
`Not indefinite.
`
`"a group of connected computers and/or computer processes"
`
`b. Defendants 'proposed construction:
`
`Indefinite.
`
`c. Court's construction: "each of the broadcast channels"
`
`At the Markman hearing, the parties advised that they had agreed to a construction for
`
`"network." (Tr. at 6:11-7:12; D.I. 381 at 1; D.I. 412; D.I. 413). However, Defendants argue that
`
`the term is indefinite under 35 U.S.C. § 112. (D.I. 366 at 14).
`
`10
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 11 of 23 PageID #: 24515
`
`Independent claim 13 of the '344 patent and independent claim 13 of the '966 patent both
`
`include the limitation "further wherein the network ism-regular," but neither claim includes the
`
`word "network" anywhere prior to that limitation. Claim 13 of the '344 patent, which is
`
`representative, reads as follows:
`
`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).
`
`Defendants argue that "network" has no antecedent basis, and is indefinite because it fails
`
`to inform a person of ordinary skill in the art what "network" refers to. (D.I. 366 at 17; Nautilus,
`
`Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) ("a patent is invalid for
`
`indefiniteness if its claims, read in light of the specification delineating the patent, and the
`
`prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
`
`scope of the invention.")).
`
`Plaintiff responds by citing to Energizer Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d
`
`1366, 1371 (Fed. Cir. 2006), which holds that an antecedent basis may present by "implication."
`
`(D.I. 366 at 15, 23). In that case, the claim term "said zinc anode" had no explicit antecedent
`
`basis in the claim. However, the claim at issue recited "an anode gel comprised of zinc as the
`
`11
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 12 of 23 PageID #: 24516
`
`active anode component" prior to reciting "said zinc anode," and the specification provided that
`
`the claimed anode gel was made of zinc. Thus, the Federal Circuit found "anode gel" to be the
`
`antecedent basis for "said zinc anode" by "implication," and found the claim not indefinite.
`
`Energizer Holdings, Inc., 435 F.3d at 1368-71.
`
`Plaintiff argues that this case is akin to Energizer Holdings, Inc., because a person of
`
`ordinary skill of the art would understand by implication that "network" refers to "a plurality of
`
`participants" that are connected to one another and make up one of "a plurality of broadcast
`
`channels." (D.I. 366 at 16, 24).
`
`Defendants, by contrast, argue that Energizer Holdings, Inc. is distinguishable because
`
`here, neither the claim language nor the specification implies what "network" refers to. (D.I. 366
`
`at 20). Instead, Defendants compare this case to Collabo Innovations, Inc. v. Omni Vision Techs.,
`
`Inc., 2017 WL 3670661, at *8-9 (D. Del. Aug. 25, 2017), where the term "the first active region"
`
`was found indefinite because the claim left open "the option of including more than one active
`
`region," and the patent specification failed to provide guidance as to which "active region"
`
`would be "the first." Likewise, say Defendants, a person of ordinary skill in the art here would
`
`find it ambiguous whether "network" refers to the "plurality of broadcast channels," the
`
`"participants" in a single broadcast channel, or something else. (D.I. 366 at 18).
`
`A "broadcast channel" is an overlay network formed on an underlying network. ('344
`
`patent at 4:23-32). The '344 patent specification provides that a "broadcast channel," or
`
`"broadcast network," "can be maintained as m-regular and m-connected" when the number of
`
`internal connections is even. ('344 patent at 14:63-15:4). The patent specification makes no
`
`reference to an "m-regular" underlying network.
`
`12
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 13 of 23 PageID #: 24517
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`r
`
`Accordingly, in light of the intrinsic evidence, it would be clear to a person of ordinary
`
`skill in the art that "network" refers to a "broadcast channel."
`
`Defendants argue that even if Plaintiffs argument is credited and "network" refers to a
`
`broadcast channel, it is unclear which of the claims' "plurality of broadcast channels" the
`
`"network" refers to. (D.I. 366 at 22). However, the claims explicitly dictate that "each"
`
`broadcast channel must provide game information to a "plurality of participants." ('344 patent,
`
`claim 13). Thus, a person of ordinary skill in the art would understand that "network" refers to
`
`"each of the broadcast channels," and that each "network" must be "m-regular."
`
`Thus, the claims in which term 10 appears are not indefinite under 35 U.S.C. § 112.
`
`Nautilus, Inc., 134 S. Ct. at 2124.
`
`3. Term 21: "peers" and "peer-to-peer connections" ('147/15)
`
`a. Plaintiff's proposed construction: "participants that are similar"
`
`b. Defendants' proposed construction: "equally privileged and equipotent computers of the
`network"
`
`c. Court's construction: "computers that are equally able to send and receive information"
`
`The parties agree that "peers" are either "computers" or "participants" "that are equally
`
`able to send and receive information." (Tr. at 54:7-24).
`
`Plaintiff argues that my construction must refer to "participants." (Id.). Defendants, on
`
`the other hand, argue that it must refer to "computers." (Id.).
`
`"Peers" appears in claim 15 of the '14 7 patent. Claim 11 of the '14 7 patent, from which
`
`claim 15 depends, covers, "A computer readable medium containing instructions for controlling
`
`disconnecting of a computer from another computer .... " The claim refers to "computer[ s ]" and
`
`to "a broadcast channel," but never to "participants." Claim 15 of the' 147 patent covers, "The
`
`computer readable medium of claim 11 wherein the computers that are connected to the
`
`13
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 14 of 23 PageID #: 24518
`
`broadcast channel are peers." (Emphasis added). Likewise, it does not contain a reference to
`
`"participants."
`
`Accordingly, I construe "peers" to mean "computers that are equally able to send and
`
`receive information."
`
`I do not construe "peer-to-peer connections," because that term does not appear in an
`
`asserted claim. (Tr. at 45 :8-46:6).
`
`4. Term 24: "A non-routing table based computer readable medium containing
`instructions for controlling communications of a participant of a broadcast channel
`within a network" ('634/19)
`
`a. Plaintiff's proposed construction:
`
`Not indefinite and covers patent eligible subject matter.
`
`"instructions for controlling communications within a network that does not need routing
`tables or switch-based methods to move messages between participants"
`
`b. Defendants' proposed construction:
`
`The preamble is limiting.
`
`"A non-routing table based computer readable medium ... " is indefinite.
`
`Also, the claim covers mere printed matter, thus the claimed limitations are given no
`patentable weight, and/or the claim covers patent ineligible subject matter under 35
`U.S.C. § 101.
`
`c. Court's construction:
`
`"a computer-readable medium containing instructions that control communications of a
`participant of a broadcast channel within a network that does not use routing table(s)"
`
`"A non-routing table based computer readable medium ... "is indefinite.
`
`At the Markman hearing, the parties advised that they had agreed on a construction for
`
`term 24. (Tr. at 8:3-9; D.I. 381at1; D.I. 412; D.I. 413). Later, Plaintiff argued that it disagrees
`
`that the preamble is limiting. (D.I. 417). However, Defendants' proposed construction, to which
`
`14
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 15 of 23 PageID #: 24519
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`Plaintiff advised it agreed, stated the preamble is limiting. (D.I. 366 at 33-34; D.I. 381 at 1-2).
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`Plaintiff failed to object to Defendants' contention that the preamble is limiting in its Markman
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`briefing or at the Markman hearing, stating only generically that it was "not agreeing to the
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`positions [Defendants were] taking," which included indefiniteness and printed matter
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`contentions. (Tr. at 8: 16-9:2). In fact, in its briefing, Plaintiff argued that the "instructions" of
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`the preamble "functionally limit the design of the network." (D.I. 366 at 57). Accordingly,
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`Plaintiff waived the issue, and the preamble is limiting. 3
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`Defendants argue that the term should be given no patentable weight under the printed
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`matter doctrine, that the term covers patent ineligible subject matter under 35 U.S.C. § 101, and
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`that the term is indefinite under 35 U.S.C. § 112. (D.I. 366 at 33).
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`Whether the parties' agreed-upon construction implicates the printed matter doctrine and
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`whether the term covers patent ineligible subject matter are not issues of claim construction.
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`They are more appropriately addressed at the summary judgment stage. Accordingly, I do not
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`address them now.
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`Turning to Defendants' indefiniteness argument, "a patent is invalid for indefiniteness if
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`its claims, read in light of the specification delineating the patent, and the prosecution history,
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`fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."
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`Nautilus, Inc., 134 S. Ct. at 2124.
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`Defendants make two separate indefiniteness arguments. First, Defendants assert that the
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`term is indefinite because it uses "incomprehensible word combinations." (D.I. 366 at 44).
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`Second, Defendants assert that that the phrase "non-routing table based" is itself indefinite. (Id.
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`at 46).
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`3 For the same reasons, the term 25 preamble is also limiting. Additionally, in its briefing, Plaintiff argued,
`"The preamble [of term 25] limits the method." (D.1. 366 at 58-59).
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 16 of 23 PageID #: 24520
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`As to the first assertion, Defendants argue that "non-routing table based" modifies
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`"computer readable medium" in the term "non-routing table based computer readable medium
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`containing instructions for controlling communications of a participant of a broadcast channel
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`within a network." Because the term "non-routing table based computer-readable medium" is
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`"nonsensical," Defendants assert that term 24 is indefinite. (D.I. 366 at 44).
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`Plaintiff does not disagree that "non-routing table based computer-readable medium" is
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`"nonsensical." (Tr. at 58: 11-20). Rather, Plaintiff argues that a person of ordinary skill in the art
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`would understand that "non-routing table based" modifies "network." (D.I. 366 at 57).
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`"A claim must be read in accordance with the precepts of English grammar." In re
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`Hyatt, 708 F .2d 712, 714 (Fed. Cir. 1983 ). "Even 'a nonsensical result does not require the court
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`to redraft the claims of the patent."' Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374
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`(Fed. Cir. 2004) (citing Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1374 (Fed.
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`Cir. 1999)); see also Randall May Intern., Inc. v. DEG Music Prods., Inc., 378 F. App'x 989,
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`997 (Fed. Cir. 2010) ("Moreover, the claim language teaches that the shoulder supporting
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`members should be 'changeable' or 'adjustable': these terms immediately precede the term
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`'shoulder supporting members' and the only reasonable construction, therefore, is that these
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`shoulder supporting members themselves, rather than the entire assembly, should be adjustable
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`or changeable").
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`Defendants are correct that as a matter of grammar, "non-routing table based" modifies
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`"computer-readable medium," not "network." (D.I. 366 at 45).
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`Furthermore, the '634 patent specification's only reference to "non-routing table based"
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`is a teaching that "[ e ]mbodiments of the invention deal with a non-routing table based method
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 17 of 23 PageID #: 24521
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`for broadcasting messages in a network." ('634 patent at 2:46-47). This teaching does not shed
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`light on term 24's grammar.
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`I cannot rewrite the patent to make "non-routing table based" modify "network."
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`Accordingly, given that the parties agree that "non-routing table based computer-readable
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`medium" is "nonsensical," claim 19 of the '634 patent "fail[s] to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention." Nautilus, Inc., 134 S. Ct. at
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`2124. The claim is therefore indefinite.
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`I need not reach Defendants' second indefiniteness assertion for this term.
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`5. Term 25: "A computer-bas_ed, non-routing table based, non-switch based method for
`adding a participant to a network of participants" ('069/1)
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`a. Plaintiff's proposed construction:
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`Not indefinite
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`"a network that is not directly based on routing tables or switch-based methods to move
`messages between participants"
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`b. Defendants' proposed construction:
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`The preamble is limiting and indefinite.
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`c. Court's construction: "a computer-based method for adding a participant to a network of
`participants that does not use routing table(s) or switches"
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`At the Markman, the parties advised that they had agreed on a construction, should I
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`construe term 25. (Tr. at 9:3-14; D.I. 381 at 2; D.I. 412; D.I. 413). As is the case for term 24,
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`the preamble is limiting. However, Defendants contend that term 25 is indefinite because "the
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`term 'non-routing table based' is itself indefinite in the context of this patent." (D.I. 366 at 50).
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`To support their contention, Defendants make three arguments. First, Defendants argue
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`the specification fails to disclose "what must be absent to meet the negative limitation" of "non-
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`routing table based." (D.I. 366 at 46). Second, Defendants argue the specification does not
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`Case 1:16-cv-00455-RGA Document 370 Filed 01/17/18 Page 18 of 23 PageID #: 24522
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`teach what is meant by "routing-table based" or "non-routing table based." (Id. at 48). Third,
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`Defendants argue that Plaintiffs "continued ... advance[ ment o:fJ new interpretations of 'routing
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`table's' meaning i