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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Bryan F. Moore
`Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN LOCATION-SHARING
`SYSTEMS, RELATED SOFTWARE,
`COMPONENTS THEREOF, AND
`PRODUCTS CONTAINING SAME
`
`
`Inv. No. 337-TA-1347
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`
`
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`COMMISSION INVESTIGATIVE STAFF’S OPENING MARKMAN BRIEF
`
`
`
`
`
`
`
`Margaret D. Macdonald, Director
`Anne Goalwin, Supervisory Attorney
`Monisha Deka, Investigative Attorney
`
`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street SW, Suite 401
`Washington, DC 20436
`(202) 205-3180
`
`
`April 25, 2023
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`i
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`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`INTRODUCTION......................................................................................................................... 1
`
`BACKGROUND ........................................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Asserted Claims ................................................................................................................ 1
`
`Background of the ‘970 Patent Claims at Issue in This Investigation ........................ 2
`
`Litigation History and Staff’s Deviation from the Prior Markman Orders ............... 8
`
`III.
`
`SUMMARY OF THE DISPUTES ............................................................................................. 13
`
`A.
`
`B.
`
`C.
`
`Terms to be Construed .................................................................................................. 13
`
`Disputed Term from the Location Patents .................................................................. 13
`
`Disputed Terms of the Forced Message Patent ........................................................... 14
`
`LEGAL STANDARD ................................................................................................................. 17
`
`DISCUSSION .............................................................................................................................. 20
`
`IV.
`
`V.
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`Person of Ordinary Skill in the Art .............................................................................. 20
`
`“Means for Requiring…” .............................................................................................. 20
`
`“Means for Controlling…” ........................................................................................... 29
`
`“Means for Presenting…” ............................................................................................. 32
`
`“…to take control…” ..................................................................................................... 39
`
`“predetermined network of participants, wherein each participant has a
`similarly equipped PDA/cell phone” ............................................................................ 41
`
`“status data” ................................................................................................................... 43
`
`“manual response” ......................................................................................................... 46
`
`“group” ........................................................................................................................... 48
`
`VI.
`
`CONCLUSION ........................................................................................................................... 50
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`
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`

`

`
`
`Cases
`
`02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ..................... 17
`
`Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349-50 (Fed. Cir. 2016) ......... 5, 33, 35
`
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014) ..................................................... 44
`
`Aristocrat Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) ........................... 11
`
`Autogiro Co. of America v. U.S., 384 F.2d 391, 397 -398 (Ct. Cl. 1967) .................................................. 44
`
`Aylus, 856 F.3d at 1361 ................................................................................................................................. 9
`
`Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997)................. 18
`
`Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) .................................................................................. 18
`
`CUPP Computing AS v. Trend Micro Inc., (Fed Cir. 2022) ................................................................... 9, 26
`
`Finisar v. Directv, 523 F.3d 1323, 1340 (Fed. Cir. 2008) .................................................................... 12, 15
`
`Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) ........................................................... 27
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). 17
`
`Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) ........................ 18
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015) .................... 46
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 (2014) ......................................................... 44
`
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)............................................... 18
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) ............................................................. 17, 18
`
`Rain Computing v. Samsung Electronics, 989 F.3d 1002, 1007-08 (Fed. Cir. 2021) ....................... 9, 10, 25
`
`Studiengesellschaft Kohle v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) .................................... 20
`
`Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1368 (Fed. Cir. 2021) ................................ 9, 15
`
`Typhoon Touch Technologies v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) .............................. 10, 35
`
`Vanderlande Indus. Nederland BV v.Int’l Trade Comm’n., 366 F.3d 1311,1323 (Fed. Cir. 2004) ............ 17
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ............................................. 18
`
`Vivid Tech., Inc. v. American Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) .............................. 17
`
`

`

`VLSI Tech. LLC v. Intel Corp., 53 F.4th 646, 653 (Fed. Cir. 2022) ........................................................... 32
`
`Warner-Jenkinson Co. v. Hilton Davis Chemical, 520 U.S. 17, 27-28 (1997) ..................................... 27, 28
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015) ...................................... 34, 38
`
`WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ........................................ 10
`
`

`

`I.
`
`Introduction
`
`Pursuant to Order No. 9, the Commission Investigative Staff (“Staff”) respectfully
`
`submits this initial Markman brief. This brief addresses the terms in the claims of asserted U.S.
`
`Patent Nos. 8,213,970 (“the ’970 Patent); 9,467,838 (“the ’838 patent”); 9,445,251 (“the ’251
`
`patent”); 9,749,829 (“the ’829 patent”); and 9,820,123 (“the ’123 patent”) (collectively, “the
`
`Asserted Patents”) that Complainants Advanced Ground Information Systems, Inc. and AGIS
`
`Software Development LLC (“AGIS” or “Complainants”), Respondents,1 or the Staff have
`
`identified as in dispute. Should the private parties raise additional claim construction disputes in
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`the future, e.g., as part of their rebuttal Markman briefs or as part of the parties’ pre-hearing
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`statements and briefs, the Staff may seek to address such disputes if and when appropriate.
`
`II.
`
`Background
`
`A.
`
`Asserted Claims
`
`
`
`Complainants allege infringement of claims 2 and 10-13 of the ’970 patent; claims 1, 3,
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`5-10, 16, 19, 25, 38, 40, 54-56, 61-64, 68, 71, 72, 80 and 84 of the ’838 patent; claims 1, 2, 5, 7,
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`8, 23-25, 28-31, and 35 of the ’251 patent; claims 1, 8, 34, 35, 41, and 68 of the ’829 patent; and
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`claims 14 and 36-38 of the ’123 patent. See Notice of Investigation, 87 Fed. Reg. 80568
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`(December 30, 2022). On the face of the Asserted Patents, all claim priority to the application
`
`for the non-asserted parent, U.S. Patent 7,031,728 (“the ’728 patent”), filed on September 21,
`
`
`1 Google LLC; Samsung Electronics, Co., Ltd.; Samsung Electronics America, Inc.; OnePlus
`Technology (Shenzhen) Co., Ltd.; TCL Technology Group; TCL Electronics Holdings Limited;
`TCL Communication Technology Holdings Limited; TCT Mobile (US) Inc.; Lenovo Group
`Ltd.; Lenovo (United States) Inc.; Motorola Mobility LLC; HMD Global; HMD Global OY;
`HMD America, Inc.; Sony Corporation; Sony Mobile Communications, Inc.; ASUSTek
`Computer Inc.; ASUS Computer International; BLU Products; Panasonic Holding Corporation;
`Panasonic Corporation; Kyocera Corporation; Xiaomi Corporation; Xiaomi H.K. Ltd.; Xiaomi
`Communications Co., Ltd.; and Xiaomi Inc.
`
`
`1
`
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`

`

`2004.2
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`
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`Four of the asserted patents (excluding the ’970 patent) share substantially the same
`
`specification. From this set, there is only one disputed claim term – “group” – that appears in all
`
`asserted independent claims from these four patents, but the majority of the disputes for the
`
`Markman hearing are for the two asserted independent claims of the ’970 Patent.
`
`B.
`
`Background of the ‘970 Patent Claims at Issue in This Investigation
`
`
`
`Due to the prosecution and litigation history of the ’970 Patent, there is a considerable
`
`amount of intrinsic evidence that a person of ordinary skill in the art (“POSITA”) would need to
`
`consider in understanding the scope of the claims. Most recently, the asserted independent
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`claims issued in the Re-examination Certificate dated December 9, 2021, as opposed to the
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`original version of the ’970 Patent that issued July 3, 2012.
`
`
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`Accordingly, statements by the Patent Owner during examiner interviews, responses to
`
`office actions, and amendments in the Ex Parte Reexamination Procedure (“EPR”) inform the
`
`scope of the claims at issue. See JMX-0011 (EPR File History). Likewise, statements by the
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`Patent Owner in the Inter Partes Reexamination (“IPR”) also inform the scope of the claims at
`
`issue.3 In short, this is one of those patents where a high-level reading of the words is
`
`inappropriate give then vast amount of intrinsic evidence. Instead, the numerous arguments,
`
`assertions, and amendments by the Patent Owner need to be considered in determining the
`
`POSITA’s understanding of the claims.
`
`
`2 Accordingly, the Complaint identifies the expiration date of the majority Asserted Patents as
`September 21, 2024. See e.g. Complaint at ¶ 80.
`3 The Staff notes that select documents such as the Final Written Determination from the IPR are
`included in the Certified File History for the ’970 Patent (JMX-0006) however, other Patent
`Owner submissions have been omitted and included as exhibits hereto.
`2
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`
`
`
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`

`

`1. Background of Asserted Independent Claims of the ’970 Patent
`
`
`
`The two independent claims of the ’970 Patent asserted in this investigation are claims 2
`
`and 10, as listed in the Re-examination Certificate. Asserted independent claim 2 is a
`
`complicated system claim that initially lists structural elements: (i) “predetermined network of
`
`participants,” (ii) “a data transmission means,” (iii) “a sender PDA/cell phone and at least one
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`recipient PDA/cell phone for each electronic message,” and (iv) “a forced message alert software
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`application program,” followed by approximately twelve limitations that are undisputedly
`
`claimed as means-plus-function (“MPF”) limitations, many of which are clearly directed to
`
`specialized software functionality. See e.g. JMX-0001 at 2:1-5 (stating that the invention is
`
`embodied in software developed by the Patent Owner).
`
`
`
`The prosecution history from the ’970 patent EPR assists in understanding the convoluted
`
`final form of the claim. More specifically, during the EPR the patent owner combined: (1) the
`
`originally issued claim 1 (invalidated in the IPR); (2) the originally issued dependent claim 2;
`
`and (3) three new limitations regarding geographic mapping that are purportedly supported by
`
`the parent patent, U.S. Patent 7,031,728 (“the ’728 patent”). See e.g. JMX-0011 at 1767
`
`(examiner interview).
`
`
`
`With respect to the limitations derived from the original claim 1 (canceled per IPR), in
`
`the Staff’s view the intrinsic evidence from the Patent Owner’s statements during the IPR inform
`
`the scope of the claimed invention in this investigation. See e.g. JMX-0006.229 IPR FWD
`
`(“Patent Owner’s position appeared to be that because ‘taking control’ must mean more than
`
`what is described at 8:39-51 and corresponding portion of Figure 4 and because the Specification
`
`does not explicitly describe any other form of taking control, taking control could be so broad as
`
`to include physically grabbing a phone away from someone’s hands.”).
`
`
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`3
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`

`

`
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`In the Staff’s view, there are three notable issues from the combination of original claim
`
`1 and original dependent claim 2. First, it should be noted that the original dependent claim 2
`
`was expressly directed to software on the recipient devices, accordingly, it is clear that certain
`
`MPF limitations must be performed by software on a specific device.4
`
`
`
`Second, while the limitations of dependent claim 2 may have had a logical meaning
`
`standing alone, when combined with the limitations of independent claim 1 there is redundancy
`
`and/or ambiguity amongst the collection of MPF limitations. This issue is discussed further
`
`below with respect to the “means for requiring…” (from original claim 1), including the Patent
`
`Owner’s express statements in the IPR defining the term, and “means for controlling…” (in
`
`original claim 2) limitations.
`
`
`
`Third, it is notable that the examiner in the EPR issued a final rejection for essentially the
`
`same reasons as the IPR. As a result, it is unclear whether and how the limitations that
`
`originated from dependent claim 2 materially limit the scope of the asserted independent claim.
`
`This final rejection gives context for the three “new” limitations that were added in the EPR.
`
`
`
`While the Patent Owner had originally drafted new dependent claims directed to
`
`geographic location and mapping limitations in the EPR, the Patent Owner moved the
`
`geographic location and mapping limitations into independent claims 2 and 10 in response to the
`
`final rejection. See JMX-0011.1918. Thus, a POSITA would understand that the three “new”
`
`geographic location and mapping limitations were required to distinguish the forced messaging
`
`
`4 The Staff disagrees with any argument that the claim is agnostic as to which device is
`performing various claimed functions. See e.g. Ex. 3, IPR Patent Owner Statement at 2
`(“The ’970 patent met this need, in part, by describing a forced message alert system which
`includes (1) a user interface on the sender’s device that displays tracking information for
`acknowledgement data; and (2) a user interface on the recipient’s device that forces the recipient
`to choose a required response in order to clear the display of the recipient’s device.”).
`
`
`4
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`
`
`
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`

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`invention of independent claims 2 and 10 over prior art. Id.
`
`
`
`In addition, with respect to the geographic location and mapping limitations in Claim 2
`
`(i.e. MPF form), the Staff notes that the Patent Owner represented to the examiner that the
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`corresponding structure was disclosed in the parent ’728 Patent. JMX-0011 at 1767. However, a
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`similar geographic location means-plus-function limitation in the parent ’728 Patent was found
`
`indefinite for lacking disclosure of corresponding structure by the Federal Circuit.5 Advanced
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`Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349-50 (Fed. Cir. 2016).
`
`
`
`In sum, the system of asserted independent claim 2 combines (i) the limitations from
`
`original independent claim 1 that was found invalid in the IPR with (ii) MPF limitations from
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`original dependent claim 2 specifically directed to software on the system’s recipient devices,
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`where the combination of (i) and (ii) was finally rejected by the examiner in the EPR for the
`
`same reasons as in the IPR. See JMX-0011.1855-1892 (charting limitations to prior art). Then,
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`this combination was combined with three new geographic and mapping limitations, which
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`according to the patent owner, are supported by the parent ‘728 Patent (where some claims were
`
`invalidated for lacking sufficient corresponding structure for MPF limitations).
`
`
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`An annotated version of the asserted independent claim 2 is listed below. The bold terms
`
`
`5 See ’970 Patent at Claim 2 (“means for presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cell phone”); c.f. Ex. 1,
`2014 Markman Order at 11 (“While the specification does describe, in general terms, that
`symbols are generated based on the latitude and longitude of the participants, it fails to contain
`an ‘algorithm’ or description as to how those symbols are actually ‘generated.’ See Aristocrat, 52
`1 F.3d at 1333 (finding that, even though the specification and claims clearly restricted a ‘game
`control means’ to ‘algorithms’ that produced a specific result, the lack of an explicit algorithm
`rendered the claims indefinite). The mere disclosure of a general purpose computing device in
`the ’728 Patent is not structurally sufficient because such devices ‘can be programmed to
`perform very different tasks in very different ways,’ and ‘simply disclosing a computer as the
`structure’ is insufficient.”); Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
`1349-50 (Fed. Cir. 2016).
`
`
`5
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`

`

`are those elected to be disputed in this Markman procedure.
`
`Source
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Original Claim 1
`
`Added in Re-exam
`
`Added in Re-exam
`
`Added in Re-exam
`
`Original Claim 2
`
`Limitation
`A communication system for transmitting, receiving,
`2.
`confirming receipt, and responding to an electronic message,
`comprising:
`a predetermined network of participants, wherein each participant has a
`similarly equipped PDA/cell phone that includes a CPU and a touch
`screen display a CPU and memory;
`a data transmission means that facilitates the transmission of electronic files
`between said PDA/cell phones in different locations;
`a sender PDA/cell phone and at least one recipient PDA/cell phone for each
`electronic message;
`a forced message alert software application program including a list of
`required possible responses to be selected by a participant recipient of a forced
`message response loaded on each participating PDA/cell phone;
`means/or attaching a forced message alert software packet to a voice or text
`message creating a forced message alert that is transmitted by said sender
`PDA/cell phone to the recipient PDA/cell phone, said forced message alert
`software packet containing a list of possible required responses and requiring
`the forced message alert software on said recipient PDA/cell phone to transmit
`an automatic acknowledgment to the sender PDA/cell phone as soon as said
`forced message alert is received by the recipient PDA/ cell phone;
`means for requiring a required manual response from the response list by
`the recipient in order to clear recipient's response list from recipient's cell
`phone display;
`means for receiving and displaying a listing of which recipient PDA/cell
`phones have automatically acknowledged the forced message alert and which
`recipient PDA/ cell phones have not automatically acknowledged the forced
`message alert;
`means for periodically resending said forced message alert to said recipient
`PDA/cell phones that have not automatically acknowledged the forced
`message alert; and
`means for receiving and displaying a listing of which recipient PDA/cell
`phones have transmitted a manual response to said forced message alert and
`details the response from each recipient PDA/cell phone that responded; and
`means for displaying a geographical map with georeferenced entities on the
`display of the sender PDA/cell phone;
`means for obtaining location and status data associated with the recipient
`PDA/cell phone; and
`means for presenting a recipient symbol on the geographical map
`corresponding to a correct geographical location of the recipient PDA/cell
`phone,6
`wherein the forced message alert software application program on the recipient
`PDA/cell phone includes:
`
`
`6 C.f. ‘728 Patent at Claim 3 (having the indefinite means-plus-function limitation “symbol
`generator in said CPU that can generate symbols that represent each of the participants’ cell
`phones in the communication network on the display screen”).
`6
`
`
`
`
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`

`

`Original Claim 2
`
`Original Claim 2
`
`Original Claim 2
`
`Original Claim 2
`
`means for transmitting the acknowledgment of receipt to said sender PDA/cell
`phone immediately upon receiving a forced message alert from the sender
`PDA/cell phone;
`means for controlling of the recipient PDA/cell phone upon transmitting
`said automatic acknowledgment and causing, in cases where the force
`message alert is a text message, the text message and a response list to be
`shown on the display of the recipient PDA/cell phone or causes, in cases
`where the forced message alert is a voice message, the voice message being
`periodically repeated by the speakers of the recipient PDA/cell phone
`while said response list is shown on the display;
`means for allowing a manual response to be manually selected from the
`response list or manually recorded and transmitting said manual response to
`the sender PDA/cell phone; and
`means for clearing the text message and a response list from the display of the
`recipient PDA/cell phone or stopping the repeating voice message and clearing
`the response list from the display of the recipient PDA/cell phone once the
`manual response is transmitted.
`
`2. Background of Claim 10
`
`
`
`Asserted independent claim 10 is a method claim directed to (i) steps performed on a
`
`recipient device and (ii) steps performed on a sender device. During the EPR, the Patent Owner
`
`repeatedly argued for patentability of the invention in Claim 10 for the same reasons as for Claim
`
`2. JMX-0011 at 1777 and 1782. As with Claim 2, geographic location and mapping limitations
`
`that were originally drafted as dependent limitations (shown in italics below) were added to
`
`overcome the final rejection. The bolded limitations are those selected to be addressed in this
`
`Markman proceeding.
`
`10. A method of receiving, acknowledging and responding to a forced
`message alert from a sender PDA/cell phone to a recipient PDA/cell phone,
`wherein the receipt, acknowledgment, and response to said forced message
`alert is forced by a forced message alert software application program, said
`method comprising the steps of:
`
`
`receiving an electronically transmitted electronic message;
`
`identifying said electronic message as a forced message alert, wherein
`said forced message alert comprises of a voice or text message and a forced
`message alert application software packet, which triggers the activation of
`the forced message alert software application program within the recipient
`PDA/cell phone;
`
`
`7
`
`
`
`
`
`

`

`transmitting an automatic acknowledgment of receipt to the sender
`PDA/cell phone, which triggers the forced message alert software
`application program to take control of the recipient PDA/cell phone and
`show the content of the text message and a required response list on the
`display recipient PDA/cell phone or to repeat audibly the content of the
`voice message on the speakers of the recipient PDA/cell phone and show
`the required response list on the display recipient PDA/cell phone; and
`
`transmitting a selected required response from the response list in order
`to allow the message required response list to be cleared from the recipient's
`cell phone display, whether said selected response is a chosen option from
`the response list, causing the forced message alert software to release
`control of the recipient PDA/cell phone and stop showing the content of the
`text message and a response list on the display recipient PDA/cell phone
`and or stop repeating the content of the voice message on the speakers of
`the recipient PDA/cell phone;
`
`displaying the response received from the PDA cell phone that
`transmitted the response on the sender of the forced alert PDA/cell phone;
`and
`
`
`providing a list of the recipient PDA/cell phones have automatically
`acknowledged receipt of a forced alert message and their response to the
`forced alert message; and
`
`displaying a geographical map with georeferenced entities on the
`display of the sender PDA/cellphone;
`
`obtaining location and status data associated with the recipient
`PDA/cellphone; and
`
`presenting a recipient symbol on the geographical map corresponding
`to a correct geographical location of the recipient PDA/ cellphone based on
`at least the location data.
`
`C.
`
`Litigation History and Staff’s Deviation from the Prior Markman Orders
`
`
`
`Prior to the EPR, terms from the original claims in the ’970 patent were construed in two
`
`district court Markman Orders, and also addressed in the FWD issued November 19, 2019. The
`
`Markman Order, dated October 10, 2018, was issued in a district court litigation involving
`
`Complainant AGIS and entities that are not parties to this investigation (“Markman 1”). JMX-
`
`0016.
`
`
`
`8
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`
`
`

`

`
`
`Another Markman Order, dated December 8, 2020, issued in a district court litigation
`
`involving Complainant AGIS and Respondents Google and Samsung (“Markman 2”). JMX-
`
`0017. At times Markman 2 cites to the analyses from Markman 1 and/or the FWD from the IPR.
`
`However, after the issuance of Markman 2, the litigation was removed to a different venue and
`
`the litigation is currently co-pending with this investigation.
`
`
`
`A third Markman Order, dated November 10, 2021, issued in a district court litigation
`
`involving non-parties (“Markman 3”). In the Staff’s view, certain findings in this Markman
`
`Order may be relevant in later stages of the investigation. See e.g. id. at JMX-0018.53
`
`(Complainants agreed that the entire preamble to Claim 10 is limiting).
`
`
`
`Several claim terms that were previously construed in one of these Markman Orders have
`
`been proposed for construction, typically by the Staff, and in most cases the private parties have
`
`offered constructions that align with the courts’ constructions. The Staff, which was not a party
`
`to the district court litigation, offers constructions that differ from the previous courts’
`
`constructions (1) because, in the Staff’s view, Federal Circuit opinions post-dating Markman 1
`
`clarify standards regarding sufficiency of algorithms for MPF claim terms; and (2) because
`
`statements by the Patent Owner in the IPR are applicable to limiting the claim scope in this
`
`subsequent investigation. See Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1368
`
`(Fed. Cir. 2021) (regarding sufficiency of algorithm disclosure); see also Rain Computing v.
`
`Samsung Electronics, 989 F.3d 1002, 1007-08 (Fed. Cir. 2021); see also CUPP Computing AS v.
`
`Trend Micro Inc., (Fed Cir. 2022) (“To be clear, a disclaimer in an IPR proceeding is binding in
`
`later proceedings, whether before the PTO or in court. See Aylus, 856 F.3d at 1361.”).
`
`1. Insufficient Disclosure of Algorithms for the Numerous Means-Plus-
`Function Terms
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`One of the reasons that the Staff deviated from the Markman orders is that in several
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`instances, the court construed the MPF terms by: (i) merely restating the claimed function as
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`opposed to resolving disputes regarding what the function requires, and (ii) citing to the totality
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`of the invention’s functions instead of corresponding algorithms (structure) for individual MPF
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`limitations.
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`By way of example, for the “means for attaching…” limitation Markman 2 cites to a
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`column’s worth of disclosure as the “corresponding structure” for the single limitation. See e.g.
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`Markman 2 at 46. In addition, for both the “means for requiring” and “means for controlling”
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`limitations, Markman 2 cited to the same disclosures in the specification as the purported
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`corresponding algorithms. Id. at 50, 72-73.
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`In the Staff’s view, each individual MPF limitation should be construed to have its
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`individual corresponding structure from the specification. More specifically, each MPF
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`limitation directed to a specialized software function must be linked to steps disclosed in the
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`specification for accomplishing that particular function – otherwise it amounts to pure functional
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`claiming and allowing the invention to encompass all manners of performing the functions.
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`In the Staff’s view, the fact that the specification describes the invented software at a high
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`level, step-by-step manner is insufficient where numerous functions have been claimed in a MPF
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`manner. Where a function cannot be performed by a general-purpose computer without special
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`programming, the claimed functions must be disclosed in a step-by-step manner in the
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`specification. Rain Computing, 989 F.3d at 1007 (“we have held that ‘the disclosed structure is
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`not the general purpose computer, but rather the special purpose computer programmed to
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`perform the disclosed algorithm.’ WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349
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`(Fed. Cir. 1999).”); see also Typhoon Touch Technologies v. Dell, Inc., 659 F.3d 1376, 1385
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`(Fed. Cir. 2011) (“‘the term ‘algorithm’ as a term of art in its broad sense, i.e., to identify a step-
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`by-step procedure for accomplishing a given result.’”). Here, the specification clearly describes
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`that the invention as specialized software – “Applicant's communication system and method
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`described herein is embodied in the forced alert software developed by applicant and installed in
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`the PCs and PDA/cell phones used herein.” –accordingly, algorithms for each of the individually
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`claimed functions are required. JMX-0006, ‘970 Patent at 2:1-7.
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`As an example an algorithm that is sufficiently disclosed, in Typhoon Touch, the Federal
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`Circuit considered the individual limitation “means for cross-referencing,” and found that there
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`was sufficient disclosure because “[t]he specifications state that cross-referencing entails the
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`steps of data entry, then storage of data in memory, then the search in a library of responses, then
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`the determination if a match exists, and then reporting action if a match is found.” Id. at 1386.
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`Notably, these steps identified in the specification as the supporting algorithm did not appear in
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`the same claim as the limitation “means for cross-referencing.” Id. at 1379.
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`Correspondingly, the specification here should have, inter alia, step-by-step procedures
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`for achieving each of the numerous MPF limitations. There should be step-by-step procedure for
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`the function “controlling of the recipient PDA/cell phone upon transmitting said automatic
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`acknowledgment and causing [repeating of the text or voice message],” and separately, step-by-
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`step procedure for “requiring a required manual response from the response list by the recipient
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`in order to clear recipient’s response list from recipient’s cell phone display.”
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`Merely pointing to a flow chart that repeats the functions as claimed is inadequate to
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`define the structures for each of the numerous MPF limitations. See Aristocrat Techs. Austl. Pty
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`v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (“For a patentee to claim a means for
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`performing a particular function and then to disclose only a general purpose computer as the
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`structure designed to perform that function amounts to pure functional claiming. Because
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`general purpose computers can be programmed to perform very different tasks in very different
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`ways, simply disclosing a computer as the structure designated to perform a particular function
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`does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that
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`perform the function, as requir