Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 1 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`1
`
`Term
`
`scalable message
`‘492 patent, claims 1, 8, 14, 19, 25
`‘893 patent, claims 1, 17, 37
`
`Defendants submit that the term
`“scalable” should be construed,
`including “scalable message” as
`well as “scalable byte segments”
`(‘893 patent, claim 3 and ‘492
`patent, claims 4, 21) and “scalable
`field” (‘492 patent, claim 2).
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`“a message in which the size of the message
`can be varied”
`
`Intrinsic support:
`
`‘492 patent, 9:59-10:4; 11:17-29; 12:48-13:60
`‘893 patent, 3:27-34; 10:32-45; 11:66-12:13;
`13:34-14:48
`
`Extrinsic support:
`
`Court’s construction from SIPCO, LLC. v. ABB,
`Inc., CA 6:11-cv-0048 LED-JDL (E.D. Tex.),
`Memorandum Opinion and Order (Document
`255)
`
`Court’s construction from SIPCO, LLC v.
`Amazon.com, Inc., CA No. 2:08-cv-359-JRG,
`Memorandum Opinion and Order (Document
`562)
`
`Expert Testimony re understanding of this term
`by a POSA. See Exhibit D.
`
`Defendants’ Proposed Construction and
`Support
`Scalable: “varying in size based on the size and
`complexity of the system”
`
`Scalable message: “a message that has a variable
`size based on the size and complexity of the
`system”
`
`Scalable byte segments: “byte segments that have
`variable sizes based on the size and complexity
`of the system”
`
`Scalable field: “a field that has a variable size
`based on the size and complexity of the system.”
`
`Intrinsic support:
`‘893 patent – col. 6:39-41, 6:53-56; 10:31-44;
`12:3-13; Figs. 7-9; ‘492 patent – col. 6:10-12,
`6:24-26, 9:59-10:4, 11:19-29; Figs. 7-9; Decision
`Denying Institution of Inter Partes Review in
`IPR2015-01579, e.g., at 8-10; Decision Denying
`Request for Rehearing in IPR2015-01579, e.g., at
`2-7.
`
`Extrinsic support:
`Bondi, A., “Characteristics of scalability and their
`impact on performance,” Proceedings of the
`second international workshop on Software and
`performance - WOSP '00 195 (2000) (“the ability
`of a system to accommodate an increasing number
`of elements or objects, to process growing volumes
`of work gracefully, and/or to be susceptible to
`
`-1-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 2 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`
`Defendants’ Proposed Construction and
`Support
`
`enlargement.”)
`
`Definition of “scalable,” Microsoft Computer
`Dictionary at 419 (Third Edition 1997) (“Of or
`relating to the characteristic of a piece of hardware
`or software that makes it possible for it to expand
`to meet future needs.”).
`
`Definition of “variable-length field,” Microsoft
`Computer Dictionary at 491 (Third Edition 1997)
`(“In a record, a field that can vary in length
`according to how much data it contains.”).
`
`Tanenbaum, Computer Networks, 3rd edition
`(1996), at Section 5.2.3 (“Flooding”).
`
`SIPCO, LLC v. ABB, Inc., et al., 6:11-cv-0048
`LED-JDL (E.D. TX) (July 30, 2012) (“an address
`that has a variable size based on the size and
`complexity of the system”); (“message in which
`the size of the message can be varied”)
`
`SIPCO, LLC v. Amazon.com, Inc., et al., 2:08-cv-
`359-JRG (E.D. TX) (October 19, 2012) (“an
`address that has a variable size based on the size
`and complexity of the system”).
`
`October 6, 2011 Deposition of David
`Petite, including but not limited to pg. 85-89; 373-
`85.
`
`
`-2-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 3 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`
`
`2
`
`
`low-power
`‘842 patent, claims 1, 2, 11, 16, 17
`‘692 patent, claims 1, 3, 18, 24, 32,
`34, 42, 49, 55, 60
`
`
`
`
`“power having limited transmission range”
`
`Intrinsic support:
`
`‘842 patent, 2:15-45; 5:65-6:11; 13:55-14:41
`‘692 patent, 2:34-53; 17:23-18:42
`
`Extrinsic support:
`
`Court’s construction from SIPCO, LLC. v. ABB,
`Inc., CA 6:11-cv-0048 LED-JDL (E.D. Tex.),
`Memorandum Opinion and Order (Document
`255)
`
`Court’s construction from SIPCO, LLC v.
`Datamatic, Ltd., CA No. 6:09cv532-LED-JDL
`(E.D. Tex.), Memorandum Opinion and Order
`
`-3-
`
`Defendants’ Proposed Construction and
`Support
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the scalable recitations. In
`opining about the meaning, their declarations and
`testimony may explain how Defendants’ proposed
`constructions are supported by intrinsic evidence,
`extrinsic evidence, and/or the education and
`experience of a person of ordinary skill in the art
`relevant to the patents in suit. Their declarations
`and testimony may also respond to Plaintiffs’
`proposed constructions and supporting evidence.
`
`
`“Low frequency.” Alternatively, indefinite.
`
`Intrinsic support:
`
` ‘692 patent – Fig. 14, col. 16:45-17:11; Request
`for Reconsideration of Final Office Action at 4-6
`(11/9/2001); Appeal Br. at 8-12, 18-19, 21-22
`(2/22/2001).
`
`‘842 patent – col. 5:67-6:3; 9:43-46; 14:15-18.
`
` Extrinsic support:
`
`SIPCO, LLC v. Datamatic, Ltd., 6:09-cv-532-
`LED-JDL (E.D. TX) (May 6, 2011)
`
`SIPCO, LLC v. ABB, Inc., et al., 6:11-cv-0048
`LED-JDL (E.D. TX) (July 30, 2012)
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 4 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`(Document No. 161)
`
`Expert Testimony re understanding of this term
`by a POSA. See Exhibit D.
`
`
`
`3 wide area network/WAN
`‘661 patent, claims 1, 2, 3, 5, 6, 7,
`8, 9, 12, 13, 14
`
`
`No construction necessary.
`Alternatively:
`“A communication network that connects
`
`-4-
`
`Defendants’ Proposed Construction and
`Support
`
`
`November 3, 2010 Deposition of David
`Petite, including but not limited to pg. 195-199.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the low power recitations. In
`opining about the meaning or lack thereof, their
`declarations and testimony may explain how
`Defendants’ proposed constructions are supported
`by intrinsic evidence, extrinsic evidence, and/or the
`education and experience of a person of ordinary
`skill in the art relevant to the patents in suit. Their
`declarations and testimony may also respond to
`Plaintiffs’ proposed constructions and supporting
`evidence.
`
`In addition, Drs. Heppe and/or Akl may explain
`that the claimed “low power” recitation, viewed in
`light of the specification and prosecution history,
`fails to inform those skilled in the art about the
`scope of the invention with reasonable certainty,
`including that the term could be satisfied or not
`satisfied depending on the particular view of what
`constitutes “low power,” leaving the term to the
`unpredictable vagaries of any one person’s
`opinion.
`
`
`“A communications network that interconnects
`communication facilities in different parts of a
`country or are used as a public utility, for
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 5 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`‘692 patent, claims 1, 9, 10, 11, 12,
`13, 14, 18, 19, 20, 32, 35, 36, 37,
`38, 42, 45-57
`‘732 patent, claims 1, 8, 32
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`geographically separated areas”
`
`Intrinsic support:
`
`‘661 patent, 2:42-49; 3:36-45; 4:48-52; 6;20-35;
`6:42-53; 7:21-61; 10:13-31; 11:1-31; 11:55-
`12:60; 13:5-14:16; 14:46-15:2; 16:18-27; 17:16-
`18:29
`‘692 patent, 2:34-53; 4:45-46; 6:15-30; 11:1-32;
`12:4-23; 17:23-18:42
`‘732 patent, 1:44-50; 2:53-3:5; 3:18-56; 4:60-64;
`6:32-47; 12:16-35; 16:32-41; 17:30-18:43
`
`Extrinsic support:
`
`Court’s construction from SIPCO, LLC. v. ABB,
`Inc., CA 6:11-cv-0048 LED-JDL (E.D. Tex.),
`Memorandum Opinion and Order (Document
`255)
`
`Court’s construction from SIPCO, LLC v.
`Amazon.com, Inc., CA No. 2:08-cv-359-JRG
`(E.D. Tex.), Memorandum Opinion and Order
`(Document 562)
`
`Definition of “Wide Area Network,” Microsoft
`Computer Dictionary, Third Edition, 1997
`
`Definition of “Wide Area Network,” IBM
`
`Defendants’ Proposed Construction and
`Support
`example, the internet. A wide area network is
`larger than a local area network and a
`metropolitan area network.”
`
`Intrinsic support:
`
`‘511 patent - Figs. 1, 3, 4, 10, 11; cols. 5:57-6:14;
`6:24-43; 9:3-32; 9:53-10:17; 10:50-67; 11:57-12:7;
`19:3-20:19; 20:34-62; 21:14-29; 22:1-59; ‘692
`patent - Figs. 1, 2, 4-10, 13, 14; cols. 1:25-31,
`2:50-53, 3:35-38, 5:24-40, 6:20-23, 7:51-67, 10:8-
`11, 11:1-12:23, 12:34-40, 13:13-19, 14:61-66,
`16:27-34; ‘732 patent - Figs. 1, 2, 4-10, 13, 14;
`cols. 1:44-50, 2:63-3:5, 3:51-56, 5:42-47, 6:32-47,
`7:63-8:16, 10:22-25, 11:15-12:35, 12:46-52, 13:23-
`26, 15:1-5, 16:34-41; ‘611 patent - Figs. 1, 2, 4-10,
`13, 14; cols. 1:34-38, 2:52-3:3; 3:39-44, 5:30-35,
`6:20-35 7:48-8:4, 10:9-12, 11:1-12:22, 12:33-39,
`13:10-13, 14:56-60, 16:20-27; 4/8/2003
`Amendment in ‘511 patent, p. 21; 1/5/2004 Appeal
`Brief relating to ‘511 patent, pp. 11, 17-18, 21, 27,
`30-31, 36-37, 40, 46-47, 50; 5/17/2004 Reply Brief
`relating to ‘511 patent, pp. 2-4; 8/31/2005 Decision
`on Appeal relating to ‘511 patent, p. 9; 3/4/2002
`Appeal Brief in Serial No. 09/439,059, p. 3.
`
`Extrinsic support:
`
`
`IEEE Std. 802-1990, p. 9 (1990)
`
`-5-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 6 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`Computer Dictionary, 10th Ed., 1994
`
`Expert Testimony re understanding of this term
`by a POSA. See Exhibit D.
`
`
`4
`
`
`select information
`‘661 patent, claims 1, 5, 12
`‘692 patent, claims 1, 2, 5, 8, 12,
`33
`‘732 patent, claims 1, 13, 20, 31,
`
`
`No construction necessary.
`Alternatively:
`“particular information”
`
`Intrinsic support:
`
`-6-
`
`Defendants’ Proposed Construction and
`Support
`
`
` SIPCO, LLC v. Amazon.com, Inc., et al.
`2:08-cv-359-JRG (E.D. TX)
`(October 19, 2012), p. 26 (“The Court construes
`the term ‘wide area network’ to have its plain and
`ordinary meaning. The Court nonetheless notes its
`understanding that the plain and ordinary meaning
`of ‘wide area network’ does not include a local
`area network. “).
`
`November 3, 2010 Deposition of David
`Petite, including but not limited to pg. 201-13.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the WAN recitations. In
`opining about the meaning, their declarations and
`testimony may explain how Defendants’ proposed
`constructions are supported by intrinsic evidence,
`extrinsic evidence, and/or the education and
`experience of a person of ordinary skill in the art
`relevant to the patents in suit. Their declarations
`and testimony may also respond to Plaintiffs’
`proposed constructions and supporting evidence.
`
`
`Indefinite.
`
`Intrinsic support:
`
`Not present.
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 7 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`32
`‘780 patent, claims 1, 9
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`
`
`‘661 patent, 2:15-22; 2:42-49; 3:6-35; 3:46-50;
`6:20-53; 7:21-61; 9:15-52; 10:55-67; 12:23-14:6;
`15:3-26; 16:50-18:29
`‘692 patent, 2:7-14; 2:34-41; 2:66-3:29; 3:39-44;
`6:15-30; 6:37-58; 7:17-57; 9:13-51; 10:54-67;
`12:24-14:10; 15:9-33; 16:57-18:42
`‘732 patent, 2:53-3:47; 6:54-7:7; 9:27-38; 13:18-
`39: 15:16-40; 17:30-18:43
`‘780 patent, Abstract; 2:60-67-3:12; 6:41-56;
`6:63-7:7; 8:16-25; 9:3-17; 12:45-61; 13:27-48;
`15:25-48; 16:50-17:48; 17:66-18:51
`
`
`Expert Testimony re understanding of this term
`by a POSA. See Exhibit D.
`
`
`5
`
`
`transceiver
`‘661 patent, claims 1, 8, 10, 11, 12,
`
`
`No construction necessary.
`
`-7-
`
`Defendants’ Proposed Construction and
`Support
`
`Extrinsic support:
`
`November 3, 2010 Deposition of David Petite,
`including but not limited to pg. 231-233.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the “select information”
`recitations. In opining about the meaning or lack
`thereof, their declarations and testimony may
`explain how Defendants’ proposed constructions
`are supported by intrinsic evidence, extrinsic
`evidence, and/or the education and experience of a
`person of ordinary skill in the art relevant to the
`patents in suit. Their declarations and testimony
`may also respond to Plaintiffs’ proposed
`constructions and supporting evidence.
`
`In addition, Drs. Heppe and/or Akl may explain
`that the claimed “select information” recitation,
`viewed in light of the specification and prosecution
`history, fails to inform those skilled in the art about
`the scope of the invention with reasonable
`certainty, including that the term could be satisfied
`or not satisfied depending on the particular view of
`what constitutes “select information,” leaving the
`term to the unpredictable vagaries of any one
`person’s opinion.
`
`Indefinite.
`
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 8 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`14
`‘842 patent, claims 1, 7, 12, 16, 17
`‘692 patent, claims 1, 2, 5, 6, 7, 8,
`9, 12, 16, 18, 24, 26, 27, 28, 33, 36,
`40, 42, 43, 44, 49, 55, 60, 61
`‘780 patent, claims 1, 5, 8, 9, 11,
`12, 15
`‘893 patent, claims 1-4, 6, 10, 11,
`13, 17, 18, 38
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`
`Alternatively:
`“a device that combines the functions of both
`a transmitter and a receiver”
`
`Intrinsic support:
`
`‘661 patent, 2:42-49; 4:39-47; 5:50-6:41; 6:63-
`7:44; 10:32-54; 17:16-18:29
`‘842 patent, Abstract, 1:36-39; 2:15-22; 3:42-52;
`3:65-4:2; 4:27-42; 7:58-60; 8:7-19; 13:55-14:41
`‘692 patent, 2:34-41; 4:33-41; 5:45-6:37; 6:59-
`7:40; 10:31-53; 17:23-18:42
`‘780 patent, 2:60-67; 3:14-55; 4:59-64; 6:4-56;
`7:17-65; 10:8-11:22; 17:66-18:51
`‘893 patent, 3:27-4:22; 5:41-59; 9:23-48; 13:34-
`14:48
`
`Extrinsic support:
`
`Gilbert Held, Dictionary of Communications
`Technology (2d ed. 1995)
`
`Expert Testimony re understanding of this term
`by a POSA. See Exhibit D.
`
`Defendants’ Proposed Construction and
`Support
`
`Intrinsic support:
`
`‘692 patent – Figs. 3C, 3D, 3E, col. 4:33-44, 6:7-
`10, 9:52-10:67 (and corresponding citations in the
`‘661, ‘732, and ‘780 patents and remaining
`patents).
`
`Extrinsic support:
`
`November 3, 2010 Deposition of David Petite,
`including but not limited to pg. 52; 83-99; 223-26.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the transceiver recitations. In
`opining about the meaning or lack thereof, their
`declarations and testimony may explain how
`Defendants’ proposed constructions are supported
`by intrinsic evidence, extrinsic evidence, and/or the
`education and experience of a person of ordinary
`skill in the art relevant to the patents in suit. Their
`declarations and testimony may also respond to
`Plaintiffs’ proposed constructions and supporting
`evidence.
`
`In addition, Drs. Heppe and/or Akl may explain
`that the claimed transceiver recitations, viewed in
`light of the specification and prosecution history,
`fail to inform those skilled in the art about the
`scope of the invention with reasonable certainty,
`including that the term could be satisfied or not
`satisfied depending on the particular view of what
`
`-8-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 9 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`
`
`6
`
`
`path/link
`‘314:1,4,10,12,14
`‘516:1,10,13
`’471:2,6,10,14,20,40
`‘496:1,2,7,11,12,16, 17,40,42
`selected transmission path[s]
`
`‘314 patent, claims 1, 10;
`‘471 patent, claims 2, 6, 10, 14, 40;
`‘496 patent, claims 1, 2, 7, 11, 12,
`16, 17, 40, 42
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`No construction necessary.
`Alternatively:
`"chosen transmission path[s]"
`
`Intrinsic support:
`
`‘314 patent, Abstract; 4:26-35; 4:51-5:2; 5:15-20;
`5:32-35; 5:55-6:3; 5:13-21; 5:29-35; 8:17-21;
`8:30-65; 9:3-21; 9:35-51; 10:11-14; 10:18-11:19;
`11:30-12:31;
`
`‘471 patent, Abstract; 4:35-44; 4:47-51; 4:60-
`5:11; 5:21-28; 5:37-43; 5:62-67; 6:1-10; 8:25-29;
`8:38-58; 8:61-9:6; 9:11-29; 9:43-61; 10:20-23;
`10:27-11:17; 11:18-28; 11:39-12:40;
`
`‘496 patent, 4:38-47; 4:50-54; 4:63-5:14; 5:24-
`31; 5:40-46; 5:65-6:3; 6:4-14; 8:27-31; 8:40-60;
`8:63-9:8; 9:13-21; 9:22-31; 9:45-62; 10:29-
`11:19; 11:20-12:42;
`
`Extrinsic Support:
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`-9-
`
`Defendants’ Proposed Construction and
`Support
`constitutes a transceiver, leaving the term to the
`unpredictable vagaries of any one person’s
`opinion.
`
`
`“a route between a client and a server including
`the identification of all intermediate hops to be
`traversed”
`
`Intrinsic support:
`
`‘062 patent specification, col. 5:23-23, 5:54-6:6,
`8:59-9:16, 9:26-35, 9:59-67, 11:5-17, 11:25-28,
`11:63-12:7, 12:14-21,
`8/5/99 Office Action Response, p. 5 (emphasizing
`that each client must communication through a
`transmission path that includes all other clients);
`‘062 patent reexamination, Response to First
`Office Action (1/22/08), pp. 4, 7 and 10. ‘062
`patent Reexam Appeal Brief at 34 (link tree
`includes identification of “all of the clients on the
`path”); ‘062 IPR Grant of Petition at p. 3 (defining
`client machines as a personal computer); see also,
`‘314 IPR proceedings, Patent Owner’s Preliminary
`Response, pp. 9-12, 20-23 (transmission path
`includes “all the nodes along the path from the
`client to the server”); and ‘516 patent
`reexamination 10/29/07 Office Action Response,
`pp. 9-24 and declaration of Brownrigg in support
`thereof, paragraphs 15-25. See also Patent
`Owner’s response to IPR petition filed for the ‘314
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 10 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`
`
`
`
`
`
`viable network paths observed
`by the second node
`
`‘314 patent, claim 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the transmission paths of each of
`
`Plaintiffs’ Proposed Construction and
`Support
`
`
`No construction necessary.
`Alternatively:
`"traversable network paths observed by the
`second node"
`
`Intrinsic support:
`
`‘314 patent, Abstract; 4:26-35; 4:51-5:2; 5:15-20;
`5:32-35; 5:55-6:3; 5:13-21; 5:29-35; 8:17-21;
`8:30-65; 9:3-21; 9:35-51; 10:11-14; 10:18-11:19;
`11:30-12:31;
`
`Extrinsic Support:
`
`Definition of "node," McGraw-
`Hill Dictionary of Scientific and
`Technical Terms, Fifth Edition,
`1994
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`
`No construction necessary.
`
`Intrinsic support:
`
`‘314 patent, Abstract; 4:26-35; 4:51-5:2; 5:15-20;
`5:32-35; 5:55-6:3; 5:13-21; 5:29-35; 8:17-21;
`
`Defendants’ Proposed Construction and
`Support
`patent; Oct. 14, 2008 Proposed After Final
`Amendment in ‘062 patent reexamination and
`associated Advisory Action (Dec. 16, 2008);
`claims and proposed amendments from application
`09/492,933 (including Preliminary Amendment at
`2-6, and U.S. Pat. No. 7,054,271 (Preliminary
`Amendment at 3-6, 7/7/05 at 2-8).
`
`Extrinsic Support:
`
`Emerson Elec. Co. v. SIPCO LLC, 1:15-cv-00319-
`AT (N.D. Ga.), Joint Preliminary Report ad
`Discovery Plan, p. 8.
`
`IP CO., LLC v. Schneider Elec. Bldgs. Americas,
`Inc., 6:11cv439, Plaintiff IP CO., LLC’s Opening
`Markman Brief in Support of its Proposed Claim
`Constructions, pp. 9-10 (E.D. Tex. Jan. 11, 2013)
`(“the specification contemplates the client
`‘preferably’ choosing the “best” path to the server.
`‘062 Patent, Col. 5, ll. 36-38. But in the example
`given, the path chosen is the path with the least
`number of ‘hops’ to the server. ‘062 Patent, Col. 8,
`l. 65 – Col. 9, l. 17.”).
`
`IP CO., LLC v. Sensus USA, Inc., 2:09-cv-037-
`DF, Plaintiff’s Opening Markman Brief in Support
`of its Proposed Claim Constructions, p. 3 (E.D.
`Tex. June 1, 2010) (“As new clients join or leave
`the network, or as conditions such as traffic or
`client speed change, the clients modify their paths
`
`-10-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 11 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`the second nodes
`
`‘314 patent, claim 12
`
`each transmission path from
`on[sic] of the plurality of said
`second nodes to the first node
`
`‘314 patent, claim 12
`
`the transmission path from the
`second node to the first node
`
`‘314 patent, claim 14
`
`
`
`
`
`transmission paths of clients
`
`‘516 patent, claims 1, 10
`
`the transmission path from the
`client to the gateway
`
`‘516 patent, claim 10
`
`transmission paths of a plurality
`of clients
`
`
`Plaintiffs’ Proposed Construction and
`Support
`8:30-65; 9:3-21; 9:35-51; 10:11-14; 10:18-11:19;
`11:30-12:31;
`
`Extrinsic Support:
`
`Definition of "node," McGraw-
`Hill Dictionary of Scientific and
`Technical Tear's, Fifth Edition,
`1994
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`No construction necessary.
`
`Intrinsic support:
`
`‘516 patent, Abstract; 4:39-48; 4:52-57; 4:66-
`5:35; 5:43-49; 6:2-17; 8:8-20; 8:37-42; 8:51-9:5;
`9:26-45; 9:59-10:9; 10:1-13; 10:18-26; 10:31-33;
`10:38-11:22; 11:27-37; 11:49-64; 11:67-12:51;
`
`Extrinsic Support:
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`
`
`Defendants’ Proposed Construction and
`Support
`to the server in order to optimize the network.”).
`
`November 17, 2005 Deposition of Edwin
`Brownrigg, including but not limited to pgs. 149-
`54; 190-93.
`
`March 29, 2006 Deposition of Edwin Brownrigg,
`including but not limited to pgs. 150-60; 171-75;
`190-92; 196-97.
`
`June 18, 2013 Deposition of Edwin Brownrigg,
`including but not limited to pgs. 111-114; 119;
`124; 131.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the path recitations. In opining
`about the meaning or lack thereof, their
`declarations and testimony may explain how
`Defendants’ proposed constructions are supported
`by intrinsic evidence, extrinsic evidence, and/or the
`education and experience of a person of ordinary
`skill in the art relevant to the patents in suit. Their
`declarations and testimony may also respond to
`Plaintiffs’ proposed constructions and supporting
`evidence.
`
`Drs. Heppe and/or Akl may explain that the
`specification’s description of an optimization
`process, including that the clients choose hop-by-
`hop routes to a server and that the server updates
`routes based on hop-by-hop routes provided to it
`
`-11-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 12 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`
`7
`
`‘516 patent, claims 1, 13
`
`Case or claim dispositive.
`
`
`
`nearby
`‘661 patent, claims 1, 2, 12
`‘692 patent, claim 1
`‘780 patent, claims 8, 15
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`
`Defendants’ Proposed Construction and
`Support
`
`from clients.
`
`
`
`No construction necessary.
`Alternatively:
`“within transmission range of a relatively low-
`power transceiver”
`
`Intrinsic support:
`
`‘661 patent, 2:42-49; 3:6-35; 8:44-9:14; 17:16-
`18:29
`‘692 patent, 2:34-41; 2:66-3:29; 8:41-9:12;
`17:23-18:42
`’780 patent, 2:60-67; 3:25-55; 9:3-5; 9:18-36;
`17:66-18:51
`
`Extrinsic support:
`
`Court’s construction from SIPCO, LLC v.
`Datamatic, Ltd., CA No. 6:09cv532-LED-JDL
`(E.D. Tex.), Memorandum Opinion and Order
`(Document No. 161)
`
`Expert Testimony re understanding of this term
`
`
`Indefinite.
`
`Intrinsic support:
`
` ‘511 patent - Abstract; cols. 1:31-36; 2:21-24;
`2:28-37; 5:7-9; 15:12-16; 19:3-8; 19:31-39; 19:66-
`20:5; 20:20-25; 23:21-25; 24:22-26; 25:16-19;
`26:12-15; 27:10-16; Reexam Cert. at col. 2:26-30;
`‘692 patent – col. 1:25-31, 2:42-65, 6:15-30, 10:8-
`11, 10:24-30, 11:14-22, 11:55-66, 12:20-24, 12:26-
`33, 12:41-62, 13:1-7, 14:51-61, 17:34-42 (and
`corresponding citations in the ‘661, ‘732, and ‘780
`patents); ‘492 patent – abstract, 1:37-54, 2:29-35,
`4:18-35, 8:11-13, 8:22-38, 8:53-67, 9:33-35,
`10:49-51 (and corresponding citations in ‘893
`patent); ‘842 patent – col. 2:31-34, 2:41-43; 2:58-
`60, 3:28-36; 4:27-42; 5:25-30.
`
`Extrinsic support:
`
`SIPCO, LLC v. Datamatic, Ltd., 6:09-cv-532-
`LED-JDL (E.D. TX) (May 6, 2011) (“within
`transmission range of a relatively low-power
`transceiver”)
`
`-12-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 13 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`by a POSA. See Exhibit D.
`
`
`
`
`
`
`
`-13-
`
`Defendants’ Proposed Construction and
`Support
`
`
`November 3, 2010 Deposition of David Petite,
`including but not limited to pg. 190-94; 199-201.
`
`
`Merriam Webster’s Collegiate Dictionary at 775
`(10th Ed. 1997)
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the nearby recitations. In
`opining about the meaning or lack thereof, their
`declarations and testimony may explain how
`Defendants’ proposed constructions are supported
`by intrinsic evidence, extrinsic evidence, and/or the
`education and experience of a person of ordinary
`skill in the art relevant to the patents in suit. Their
`declarations and testimony may also respond to
`Plaintiffs’ proposed constructions and supporting
`evidence.
`
`In addition, Drs. Heppe and/or Akl may explain
`that the claimed “nearby” recitations, viewed in
`light of the specification and prosecution history,
`fail to inform those skilled in the art about the
`scope of the invention with reasonable certainty,
`including that the term could be satisfied or not
`satisfied depending on the particular view of what
`constitutes “nearby,” leaving the term to the
`unpredictable vagaries of any one person’s
`opinion.
`
`
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 14 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`8
`
`Term
`
`server selected transmission path
`
`‘496 patent, claims 1, 2, 7, 11, 12,
`16, 17, 40, 42
`
`Case or claim dispositive.
`
`Plaintiffs’ Proposed Construction and
`Support
`No construction necessary.
`
`Intrinsic support:
`
`‘496 patent, 4:38-47; 4:50-54; 4:63-5:14; 5:24-
`31; 5:40-46; 5:65-6:3; 6:4-14; 8:27-31; 8:40-60;
`8:63-9:8; 9:13-21; 9:22-31; 9:45-62; 10:29-
`11:19; 11:20-12:42;
`
`Extrinsic Support:
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`Defendants’ Proposed Construction and
`Support
`“a new transmission path received and stored
`by a server.”
`
`Intrinsic support:
`
`‘062 patent specification, col. 5:23-23, 5:54-6:6,
`8:59-9:16, 9:26-35, 9:59-67, 11:5-17, 11:25-28,
`11:63-12:7, 12:14-21, 8/5/99 Office Action
`Response, p. 5 (emphasizing that each client must
`communication through a transmission path that
`includes all other clients); ‘062 patent
`reexamination, Response to First Office Action
`(1/22/08), pp. 4, 7 and 10. ‘062 patent Reexam
`Appeal Brief at 34 (link tree includes identification
`of “all of the clients on the path”); ‘062 IPR Grant
`of Petition at p. 3 (defining client machines as a
`personal computer); see also, ‘314 IPR
`proceedings, Patent Owner’s Preliminary
`Response, pp. 9-12, 20-23 (transmission path
`includes “all the nodes along the path from the
`client to the server”); and ‘516 patent
`reexamination 10/29/07 Office Action Response,
`pp. 9-24 and declaration of Brownrigg in support
`thereof, paragraphs 15-25. See also Patent
`Owner’s response to IPR petition filed for the ‘314
`patent; Oct. 14, 2008 Proposed After Final
`Amendment in ‘062 patent reexamination and
`associated Advisory Action (Dec. 16, 2008);
`claims and proposed amendments from application
`09/492,933 (including Preliminary Amendment at
`2-6, and U.S. Pat. No. 7,054,271 (Preliminary
`
`-14-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 15 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`
`Defendants’ Proposed Construction and
`Support
`Amendment at 3-6, 7/7/05 at 2-8).
`
`Extrinsic support:
`
`Emerson Elec. Co. v. SIPCO LLC, 1:15-cv-00319-
`AT (N.D. Ga.), Joint Preliminary Report ad
`Discovery Plan, p. 8.
`
`IP CO., LLC v. Schneider Elec. Bldgs. Americas,
`Inc., 6:11cv439, Plaintiff IP CO., LLC’s Opening
`Markman Brief in Support of its Proposed Claim
`Constructions, pp. 9-10 (E.D. Tex. Jan. 11, 2013)
`(“the specification contemplates the client
`‘preferably’ choosing the “best” path to the server.
`‘062 Patent, Col. 5, ll. 36-38. But in the example
`given, the path chosen is the path with the least
`number of ‘hops’ to the server. ‘062 Patent, Col. 8,
`l. 65 – Col. 9, l. 17.”).
`
`IP CO., LLC v. Sensus USA, Inc., 2:09-cv-037-
`DF, Plaintiff’s Opening Markman Brief in Support
`of its Proposed Claim Constructions, p. 3 (E.D.
`Tex. June 1, 2010) (“As new clients join or leave
`the network, or as conditions such as traffic or
`client speed change, the clients modify their paths
`to the server in order to optimize the network.”).
`
`November 17, 2005 Deposition of Edwin
`Brownrigg, including but not limited to pgs. 149-
`54; 190-93.
`
`
`-15-
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 16 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`Plaintiffs’ Proposed Construction and
`Support
`
`
`9
`
`
`[selecting/initiating] a [radio]
`[transmission path/link] to
`[said/a/the] [first node/server
`node/server]
`
`
`No construction necessary.
`Alternatively:
`"choose a path to the server/first
`node including an identification of
`
`-16-
`
`Defendants’ Proposed Construction and
`Support
`March 29, 2006 Deposition of Edwin Brownrigg,
`including but not limited to pgs. 150-60; 171-75;
`190-92; 196-97.
`
`June 18, 2013 Deposition of Edwin Brownrigg,
`including but not limited to pgs. 111-114; 119;
`124; 131.
`
`Drs. Heppe and/or Akl may be asked to provide
`evidence regarding the path recitations. In opining
`about the meaning or lack thereof, their
`declarations and testimony may explain how
`Defendants’ proposed constructions are supported
`by intrinsic evidence, extrinsic evidence, and/or the
`education and experience of a person of ordinary
`skill in the art relevant to the patents in suit. Their
`declarations and testimony may also respond to
`Plaintiffs’ proposed constructions and supporting
`evidence.
`
`Drs. Heppe and/or Akl may explain that the
`specification’s description of an optimization
`process, including that the clients choose hop-by-
`hop routes to a server and that the server updates
`routes based on hop-by-hop routes provided to it
`from clients.
`
`“selecting”: choosing between alternative
`available radio transmission paths or links to
`the server.
`
`
`

`

`Case 1:16-cv-02690-AT Document 107-2 Filed 07/14/16 Page 17 of 23
`EXHIBIT B: 10 MOST IMPORTANT DISPUTED TERMS IDENTIFIED BY THE PARTIES
`
`No.
`
`Term
`
`
`‘314 patent, claims 1, 10
`‘471 patent, claims 6, 10, 17, 20,
`31, 34
`‘496 patent, claims 7, 11, 12, 21,
`24, 27, 33, 36, 37, 45
`
`initiates and selects a radio
`transmission path to said server
`
`‘471 patent, claim 2;
`‘496 patent, claims 1, 2, 42
`
`[link/path] selection step
`
`‘471 patent, claim 14
`‘496 patent, claims 16, 17
`
`
`
`Plaintiffs’ Proposed Construction and
`Support
`an entire path from the
`client/second node to the server"
`
`Intrinsic support:
`
`‘314 patent, 5:3-20; 5:29-35; 5:61-6:3; 8:51-9:21;
`9:44-12:31; 18:47-19:2; 19:25-20:3; 20:31-21:4
`
`‘471 patent, 5:12-28; 5:37-43; 6:1-6:10; 8:59-
`9:30; 9:53-12:40; 18:51-19:6; 19:28-20:6; 20:34-
`21:7
`
`‘496 patent, 5:15-31; 5:40-46; 6:4-13; 8:61-9:32;
`9:55-12:42; 18:53-19:8; 19:30-20:8; 20:36-21:9
`
`Extrinsic Support:
`
`Definition of "initiate," McGraw-
`Hill Dictionary of Scientific and
`Technical Terms, Fifth Edition,
`1994
`
`Definition of "node," McGraw-
`Hill Dictionary of Scientific and
`Technical Terms, Fifth Edition,
`1994
`
`Expert Testimony re
`understanding of this term by a
`POSA. See Exhibit D.
`
`Defendants’ Proposed Construction and
`Support
`“initiating”: Indefinite. Alternatively,
`establishing a new route, unknown to the server,
`to the server (rather than being provided a
`route by the server).
`
`Intrinsic support:
`
`‘062 patent specification, Abstract (“[t]he client
`process of each of the clients initiates, selects, and
`maintains a radio transmission path to the
`server…,” “a client process … se