Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 1 of 29
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`§
`§
`§
`§
`§
`§
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`§
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`UNILOC 2017 LLC,
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`
`Plaintiff,
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`vs.
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`PAYCHEX, INC.,
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`
`Defendant.
`
`
`UNILOC 2017 LLC,
`
`
`Plaintiff,
`
`vs.
`
`ATHENAHEALTH, INC.,
`
`
`Defendant.
`
`
`Civil Action No. 1:19-CV-11272-RGS
`Leave to File 30 Pages Granted on
`January 17, 2020. Docket No. 23.
`
`Civil Action No. 1:19-CV-11278-RGS
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`§
`§
`§
`§
`§
`§
`§
`§
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`DEFENDANTS’ JOINT OPENING BRIEF ON CLAIM CONSTRUCTION AND
`INDEFINITENESS
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 2 of 29
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`TABLE OF CONTENTS
`
`I.
`
`Introduction and Background ..................................................................................... 1
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`II. Construction of the Disputed Claim Terms ................................................................ 4
`
`III. Indefiniteness of Claims 9, 20, 22–25, 35, 37, and 39–40 ........................................ 19
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`IV. Claims Containing Means-Plus-Function Limitations Should Be Dismissed .......... 21
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`V. Conclusion ................................................................................................................ 22
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 3 of 29
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Andersen Corp v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007)....................................................................................10
`
`Aristocrat Techs. Australia PTY Ltd. v. Intl. Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)....................................................................................26
`
`Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found.,
`402 U.S. 313 (1971) .....................................................................................................23
`
`Karanos, LLC v. Silicon Storage Tech., Inc.,
`797 F.3d 1025 (Fed. Cir. 2015)....................................................................................26
`
`In re Katz Interactive Call Processing Litig.,
`639 F.3d 1303 (Fed. Cir. 2011)....................................................................................26
`
`Mendenhall v. Barber–Greene Co.,
`26 F.3d 1573 (Fed. Cir. 1994)......................................................................................24
`
`Mississippi Chemical Corp. v. Swift Agr. Chemicals Corp.,
`717 F.2d 1374 (Fed. Cir. 1983)....................................................................................24
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .................................................................................................25
`
`Northrop Grumman Corp. v. Intel Corp.,
`325 F.3d 1346 (Fed. Cir. 2003)....................................................................................26
`
`Phillips v. AWH Corp.,
`415 F.3d 1316 (Fed. Cir. 2005)................................................................................5, 19
`
`Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC,
`778 F.3d 1311 (Fed. Cir. 2015)....................................................................................24
`
`Teva Pharms USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015)....................................................................................14
`
`Uniloc USA, Inc. v. ADP, LLC,
`279 F.Supp. 3d 736 (E.D. Tex. 2017) ............................................................................7
`
`Uniloc USA, Inc. v. ADP, LLC,
`772 Fed. Appx. 890 (Fed. Cir. 2019) ................................................................... passim
`
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 4 of 29
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`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007)....................................................................................14
`
`Statutes
`
`35 U.S.C. § 112, ¶ 6 (2010) ...............................................................................................26
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 5 of 29
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`TABLE OF EXHIBITS
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`Exhibit A: Uniloc USA, Inc. v. ADP, LLC, Case No. 2:16-cv-00741, Docket No. 233
`(E.D. Tex. Aug. 16, 2017) (“EDTX Markman Order”)
`
`Excerpts from ’528 application prosecution history
`
`
`Exhibit B:
`
`Exhibit C: Uniloc’s Rule 16.6(e)(1) Disclosures and January 10 email re same
`
`Exhibit D: Uniloc USA, Inc. v. ADP, LLC, Case No. 18-cv-1132, Docket No. 53
`(Uniloc’s Opening Appeal Brief) (Fed. Cir. Aug. 22, 2018)
`
`
`Exhibit E: Uniloc USA, Inc. v. ADP, LLC, No. 2:16-cv-00741, Docket No. 210
`(Plaintiffs’ Supp. Opening Markman Brief) (E.D. Tex. July 19, 2017)
`
`
`Exhibit F:
`
`Exhibit G: Excerpts from Uniloc’s Rule 16.6(d)(1) disclosures to Paychex
`
`Exhibit H: Excerpts from ’293 patent prosecution history
`
`Exhibit I: Merriam-Webster’s Collegiate Dictionary, 984–85 (10th Ed. 1997)
`(definition of verb “register”)
`
`Excerpts from ’854 application prosecution history
`
`T. Webb, To jar or not to jar?, www.javaworld.com/article/2076712/to-jar-
`or-not-to-jar-.html (July 1, 1998)
`
`
`
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`Exhibit J:
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 6 of 29
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`I.
`
`Introduction and Background
`
`Defendants Paychex, Inc. and athenahealth, Inc. (collectively, “Defendants”)
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`respectfully submit this opening brief in support of their proposed constructions of disputed
`
`terms and phrases in the asserted claims of the patents-in-suit, United States Patent Nos.
`
`6,324,578 (“the ’578 patent”) and 7,069,293 (“the ’293 patent”), and Defendants also move
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`the Court to rule that certain asserted claims are invalid as indefinite.
`
`Defendants’ proposed constructions seek to clarify for the jury the meaning and
`
`scope of the claims, which likely would not be understandable to a lay jury without
`
`construction. Defendants’ proposed constructions are supported by the specifications, and,
`
`particularly, the patents’ descriptions of the alleged invention(s) and the problems to which
`
`they were addressed. Accordingly, Defendants respectfully request that the Court adopt
`
`their proposed constructions. See Phillips v. AWH Corp., 415 F.3d 1316 (Fed. Cir. 2005)
`
`(“The construction that . . . most naturally aligns with the patent’s description of the
`
`invention will be, in the end, the correct construction.”) (internal quotations omitted).
`
`
`
`The ’578 Patent
`
`The application for the ’578 patent was filed on December 14, 1998. The ’578
`
`patent issued on November 27, 2001 and is entitled “Methods, Systems and Computer
`
`Program Products for Management of Configurable Application Programs on a Network.”
`
`Claim 1 of the ’578 patent is exemplary and recites the following elements (first
`
`instance of each disputed term in bold italics):
`
`1. A method for management of configurable application programs on a
`network comprising the steps of:
`installing an application program having a plurality of configurable
`preferences and a plurality of authorized users on a server coupled
`to the network;
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`
`
`1
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 7 of 29
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`distributing an application launcher program associated with the
`application program to a client coupled to the network;
`obtaining a user set of the plurality of configurable preferences
`associated with one of the plurality of authorized users executing the
`application launcher program;
`obtaining an administrator set of the plurality of configurable
`preferences from an administrator; and
`executing the application program using the obtained user set and
`the obtained administrator set of the plurality of configurable
`preferences responsive to a request from the one of the plurality of
`authorized users.
`’578 patent at cl. 1 (emphasis added).
`
`
`
`The ’293 Patent
`
`The application for the ’293 patent was filed on May 31, 2001. The ’293 patent
`
`issued on June 27, 2006 and is entitled “Methods, Systems, and Computer Program
`
`Products for Distribution of Application Programs to a Target Station on a Network.”
`
`Claim 1 of the ’293 patent is exemplary and recites the following elements (first
`
`instance of each disputed term in bold italics):
`
`1. A method for distribution of application programs to a target on-demand
`server on a network comprising the following executed on a centralized
`network management server coupled to the network:
`providing an application program to be distributed to the network
`management server;
`specifying a source directory and a target directory for distribution of
`the application program;
`preparing a file packet associated with the application program and
`including a segment configured to initiate registration operations
`for the application program at the target on-demand server; and
`distributing the file packet to the target on-demand server to make the
`application program available for use by a user at a client.
`
`’293 patent at cl. 1 (emphasis added).
`
`
`
`2
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 8 of 29
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`Prior Litigation History
`
`Plaintiff, Uniloc 2017, LLC’s (“Uniloc 2017’s”) predecessor entities (including
`
`prior patent owner, Uniloc Luxembourg, S.A.) asserted the ’578 patent, the ’293 patent,
`
`and two other related patents: U.S. Patent No. 6,510,466 (“the ’466 patent”) and U.S. Patent
`
`6,728,766 (“the ’766 patent”) in litigations across the country, but largely in the Eastern
`
`District of Texas.1 All four patents are related. Specifically, the ’578 and ’466 patent
`
`specifications incorporate each other by reference and explicitly state that the patents are
`
`related. ’578 patent at 1:9–13 (cross reference to related application), 7:17–20
`
`(incorporation by reference); ’466 patent at 1:9–13 (cross reference to related application),
`
`7:43–48 (incorporation by reference). In addition, the ’766 patent resulted from a
`
`divisional application from the ’578 patent’s application, and the ’293 patent resulted from
`
`a divisional application from the ’466 patent’s application.
`
`In Uniloc USA, Inc. v. ADP, LLC, Case No. 2:16-cv-00741, in the Eastern District
`
`of Texas, the district court construed terms in all four patents and ruled that claims 20, 22,
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`24, 35, 37, and 39 of the ’578 patent were indefinite. Id., Docket No. 233 (E.D. Tex. Aug.
`
`16, 2017, Ex. A (hereinafter “EDTX Markman Order”). The court later entered final
`
`judgment against Uniloc on the basis that all claims of the four patents were invalid under
`
`35 U.S.C. § 101. Uniloc USA, Inc. v. ADP, LLC, 279 F.Supp. 3d 736 (E.D. Tex. 2017)
`
`(Order); Uniloc USA, Inc. v. ADP, LLC, Case No. 2:16-cv-00741, Docket No. 269 (E.D.
`
`Tex. Oct. 20, 2017) (Final Judgment). Uniloc appealed to the Federal Circuit2 but did not
`
`
`1 Uniloc or its predecessors-in-interest have brought approximately forty infringement suits
`asserting the ’293 Patent, of which thirty were filed in the Eastern District of Texas.
`2 Uniloc 2017, LLC owned the four then-asserted patents at the time of the appeal briefing,
`and was added to the appeal by order of the Federal Circuit. Federal Circuit Opinion, 772
`Fed. Appx. at 894 (“Uniloc’s motion to join Uniloc 2017 is granted and the caption is
`
`
`
`3
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 9 of 29
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`challenge either the claim constructions or the prior ruling of indefiniteness; Uniloc only
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`challenged the § 101 ruling. Uniloc USA, Inc. v. ADP, LLC, Case No. 2:16-cv-00741,
`
`Docket No. 269 (E.D. Tex. Nov. 20, 2017) (Notice of Appeal). The Federal Circuit
`
`reversed-in-part the district court’s § 101 ruling, affirming that all claims of the ’466 and
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`’766 patents are invalid under § 101 but holding that the ’578 and ’293 patents were not
`
`ineligible under § 101.3 Uniloc USA, Inc. v. ADP, LLC, 772 Fed. Appx. 890 (Fed. Cir.
`
`2019) (hereinafter “Federal Circuit Opinion”).
`
`II.
`
`Construction of the Disputed Claim Terms
`
`
`“Application Program(s)”
`
`Term
`Application program(s)
`
`(all asserted claims of both
`patents-in-suit)
`
`Plaintiff’s Proposal
`Ordinary meaning, which
`is software that performs
`tasks for an end-user
`
`Defendants’ Proposal
`The code associated with
`the underlying program
`functions that is a separate
`application from a browser
`interface and does not
`execute within the browser
`window
`
`
`
`Defendants’ proposed construction is based on clear definitional language in the
`
`patent specifications and on the prosecution history for the parent of the ’293 patent.
`
`Defendants’ proposed claim construction for this same claim term was adopted by the
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`United States District Court for the Eastern District of Texas. EDTX Markman Order, Ex.
`
`A at 14–23 (E.D. Tex. Aug. 16, 2017).
`
`
`amended accordingly.”). Uniloc 2017’s counsel in this litigation represented the
`predecessor Uniloc entities before the Eastern District of Texas and the Federal Circuit.
`Id. at n.1. For the remainder of this brief, Defendants will follow the Federal Circuit’s
`convention of using “Uniloc” to refer to the entity that owned the patent rights at the
`relevant time. Id. at n.2.
`3 The case remains pending in the Eastern District of Texas after remand. Defendants are
`not relying on any portion of the district court’s § 101 order that was overturned on appeal.
`
`
`
`4
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 10 of 29
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`The specifications of both asserted patents clearly define the term “application
`
`program”: “[a]s used herein, it is to be understood that the term ‘application program’
`
`generally refers to the code associated with the underlying program functions, for example,
`
`Lotus Notes or a terminal emulator program.” ’578 patent at 12:13–16; ’293 patent at
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`14:27–49 (hereinafter “definitional language”). Plaintiff’s proposed construction ignores
`
`this clearly definitional language and should be rejected for this reason alone.
`
`In addition, the prosecution history of the ’466 patent confirms Defendants’
`
`construction. As discussed above, the application that led to the ’293 patent, No.
`
`09/870,608, was a divisional of application No. 09/211,528 (“the ’528 application”), which
`
`ultimately issued as the ’466 patent. During prosecution of the ’528 application, the
`
`applicant filed an appeal brief that quoted the definitional language and further explained
`
`the meaning of “application program” in an effort to distinguish prior art “information
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`resources” that display within a browser window:
`
`In other words, the “application program” is an application level software
`program, such as Lotus Notes, while the “application launcher program” is
`provided to “initially populate the user desktop” and need not include the
`application program code. The application launcher program interacts with
`the desktop, such as a user browser interface, while an instance of the
`application program is requested through the desktop but executes locally
`at the client as a separate application from the browser interface. For
`example, Lotus Notes would not execute within the browser window.
`
`Ex. B at Paychex_PTO_0000161 (’528 application prosecution history, May 16, 2002
`
`Appeal Brief) (emphasis added). This explanation appears in the “summary of invention”
`
`section of the appeal brief following a lengthy block quote of the entire paragraph
`
`containing the definitional language – which appears verbatim in the ’578 patent at 12:13–
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`36 and in the ’293 patent at 14:27–49.
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`5
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 11 of 29
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`Uniloc argued in the Eastern District of Texas that the ’528 application prosecution
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`history is irrelevant to construction of terms in the patents-in-suit; the Court should reject
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`that argument if Uniloc makes it again here.4
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`First, it is indisputable under the law that the ’528 application prosecution history
`
`is relevant to construction of terms in the ’293 patent, because the ’293 patent was a
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`divisional of the parent ’528 application. Andersen Corp v. Fiber Composites, LLC, 474
`
`F.3d 1361, 1368 (Fed. Cir. 2007) (“The prosecution history of [the] parent application is
`
`highly instructive in light of the similarity between the claims of the application and those
`
`of the patents in suit.”). This ’528 application prosecution history also is relevant to
`
`construction of terms in the ’578 patent, at least because Plaintiff has not even suggested
`
`that the term “application program” should be construed differently between the ’293 and
`
`’578 patents.
`
`Second, as noted above, the appeal brief in the ’528 application prosecution history
`
`quoted and explained language that appears verbatim in both the ’293 and ’578 patent
`
`specifications. Uniloc would have no basis to argue that explanation of identical language
`
`in a related patent specification is not relevant. Also, as noted above, the ’578 patent
`
`expressly incorporates the ’528 application by reference, and it expressly describes the
`
`’528 application as “related.” ’578 patent at 7:17–20 (incorporation by reference), 1:10–
`
`13 (cross-reference to related application). See also EDTX Markman Order, Ex. A at 14
`
`(“[I]t cannot be reasonably disputed that the Asserted Patents are related. Accordingly, the
`
`
`4 Uniloc made that argument in the Eastern District of Texas, but that court rejected
`Uniloc’s argument. EDTX Markman Order, Ex. A at 11–14.
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`6
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 12 of 29
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`Court finds that the prosecution histories of the ’466 and ’766 patents are relevant to the
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`construction of identical terms in the related ’578 and ’293 patents.”).
`
`
`
`“Application Launcher Program”
`
`Term
`Application launcher
`program
`
`(all asserted claims of
`the ’578 patent)
`
`
`
`Defendants’ Proposal
`A program distributed to a
`client to initially populate a
`user desktop and to request
`an instance of the
`application for execution at
`the client
`
`Plaintiff’s Proposal
`Computer program that
`launches, i.e., starts
`another program
`
`Defendants’ proposed construction is based on the intrinsic evidence, and it was
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`adopted by the United States District Court for the Eastern District of Texas. EDTX
`
`Markman Order, Ex. A at 23–31.
`
`Uniloc’s proposed construction has no support in the intrinsic record and ignores
`
`the arguments that Uniloc made in the Eastern District of Texas and to the Federal Circuit.
`
`In the Eastern District of Texas, Uniloc argued that the term “application launcher
`
`program” meant “a program distributed to a client to initially populate a user desktop and
`
`to request execution of the application program.” EDTX Markman Order, Ex. A at 23.
`
`This is the same construction that Uniloc proposed in this case in its Rule 16.6 disclosures
`
`on December 12, 2019, before changing its position. See Ex. C (Uniloc’s Rule 16.6(e)(1)
`
`Disclosures and January 10 email re same). Likewise, before the Federal Circuit, Uniloc
`
`argued that “[t]he application launcher causes the server to provide a user interface that
`
`allows the user to specify user-configurable parameters of the application, and to execute
`
`the application.” Uniloc USA, Inc. v. ADP, LLC, Case No. 18-cv-1132, Docket No. 53
`
`(Uniloc’s Opening Appeal Brief), Ex. D at 47 (Fed. Cir. Aug. 22, 2018). Uniloc’s current
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`
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`7
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 13 of 29
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`proposal is impermissibly broad because it disregards the intrinsic evidence as well as its
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`previous statements of record.
`
`1.
`
`The patent specifications clearly require the application
`launcher program to “populate the user desktop.”
`
`The specification repeatedly refers to the application launcher program initially
`
`populating the user desktop (i.e. displaying a graphical user interface that shows the
`
`applications available to the user). E.g., ’578 patent at 12:26–29 (“[T]he application
`
`launcher program distributed to initially populate the user desktop preferably does not
`
`include the code associated with the underlying application program.”); 12:31–32 (“The
`
`application launcher program distributed to populate the user desktop may only include a
`
`URL and an associated ICON and, possibly, code to allow obtaining of user identification
`
`and password information.”). These specification references explain that the application
`
`launcher program must do more than simply “start another program.”
`
`This point should be undisputed given that Uniloc made the same argument
`
`previously:
`
`The ’578 patent describes a launcher as a program the server distributes to
`a client to “initially populate the user desktop” (12:26-27) by “providing for
`a user interface” (e.g., displaying an icon that corresponds to the
`application) “to execute the application.” (3:64 – 4:2). The program is called
`a “launcher” because when the user “selects” the application (by, e.g.,
`mouse-clicking on
`the
`icon),
`the
`launcher requests execution of
`(“launches”) the application itself.
`
`Uniloc USA, Inc. v. ADP, LLC, No. 2:16-cv-00741, Docket No. 210 (Plaintiffs’
`
`Supplemental Opening Markman Brief), Ex. E at 1–2 (footnotes omitted).
`
`
`
`8
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 14 of 29
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`2.
`
`The intrinsic evidence requires the application launcher
`program to “request an instance of the application for
`execution at the client.”
`
`The ’578 patent describes the application launcher program as providing a “request
`
`to initiate execution of the application program” to an on-demand server. ’578 patent at
`
`4:6–20. An “on-demand” server is expressly defined as “a server delivering applications
`
`as needed responsive to user requests as requests are received.” Id. at 6:51–53 (emphasis
`
`added). The summary of the invention also describes “delivery” of the application: “[t]his
`
`provides for reduced costs and increased uniformity in managing software in a network
`
`environment by delivering configured applications when demanded by a user.” Id. at
`
`6:2–5 (emphasis added). This is distinguished from a prior art “mainframe model” in
`
`which the execution of the application occurs at the server. Id. at 2:50–55.
`
`In addition to the clear specification support, the prosecution history for U.S. Patent
`
`Application No. 09/829,854 (“the ‘’854 application), which issued as the ’766 patent,
`
`which is a divisional from the application that issued as the ’578 patent, confirms that the
`
`patentee intended “application launcher program” to “request a configurable instance of an
`
`application from a server for execution at the client.” In distinguishing the Duvvoori
`
`reference, the patent applicant argued: “[i]n other words, while the wrappers of Duvvoori
`
`may request a license, they do not request a configurable instance of an application from
`
`a server for execution at the client as with the recited application launcher programs of
`
`the present invention.” Ex. F at Paychex_PTO_0000643 (’854 application prosecution
`
`history, Amendment of Jan. 27, 2003) (emphasis added). Although Uniloc may try to
`
`diminish this statement because certain claims of the ’854 application expressly recited
`
`“execution at the client,” the Duvvoori reference was also asserted against claims that did
`
`not include such an express limitation. Compare application claim 26 (no express
`
`
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`9
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`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 15 of 29
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`limitation) with claim 27 in Ex. F at Paychex_PTO_0000586–87 (April 10, 2001
`
`Preliminary Amendment). The meaning of “application launcher” cannot change from
`
`parent to child, especially when both share a common specification.
`
`As discussed above, Uniloc has previously argued that the prosecution history of
`
`the ’854 application should be disregarded or is extrinsic evidence to the ’578 patent, but
`
`this is incorrect. EDTX Markman Order, Ex. A at 11–14. The ’766 patent is a direct child
`
`of the ’578 patent and its prosecution history is intrinsic evidence. See Teva Pharms USA,
`
`Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (“[a] statement made during
`
`prosecution of related patents may be properly considered in construing a term common to
`
`those patents, regardless of whether the statement pre- or post-dates the issuance of the
`
`particular patent at issue.”); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
`
`1295, 1306–07 (Fed. Cir. 2007) (rejecting the argument that statements in a divisional
`
`application prosecution history should be disregarded because the parent patent had already
`
`issued at the time of the statement). The Eastern District of Texas agreed that the
`
`prosecution history was relevant, when it adopted the exact same construction that
`
`Defendants propose in this case. EDTX Markman Order, Ex. A at 11–14, 23–31.
`
`
`
`“Executing the Application Program…Authorized Users”
`
`Plaintiff’s Proposal
`Ordinary meaning
`
`Term
`Executing the application
`program using the obtained
`user set and the obtained
`administrator set responsive
`to a request from the one of
`the plurality of authorized
`users
`
`(’578 patent claim 1)
`
`
`Defendants’ Proposal
`Initiating execution of the
`application program in
`response to a launch
`request from the
`application launcher
`program using the obtained
`user set and the obtained
`administrator set
`
`
`
`10
`
`

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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 16 of 29
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`
`Defendants’ proposed construction conforms to the claim’s requirement that
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`execution of the application program must take place after the user set and administrator
`
`set of preferences are obtained. ’578 patent at cl. 1, 10:6–15 (“The application program is
`
`then executed at block 86 using the retrieved user set and administrator set of configurable
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`preferences.”) (emphasis added). In addition to the plain language of the claim and the
`
`specification, Uniloc has confirmed that the application program must be launched after
`
`the configurable preferences are obtained. In its opening Federal Circuit brief, Uniloc
`
`argued that the execution of the application program begins only after the preferences are
`
`obtained:
`
`When the user launches (i.e., chooses to execute) the application through
`the application launcher, the application provides the identity of the user to
`the server, which has stored the user’s preferences for that application. The
`program is then executed, with both the user preferences and the stored
`administrator preferences.
`
`Ex. D (Uniloc’s Opening Appeal Brief) at 47 (emphasis added). Indeed, the Federal Circuit
`
`twice stated clearly that installation of the application must proceed after the sets of
`
`configurable preferences are obtained:
`
`This positioning of the components allows the application to launch in
`“response to a request from one of the plurality of authorized users”
`pursuant to both sets of preferences. In other words, it allows for on-
`demand installation of two-tier customized applications.
`
`Federal Circuit Opinion, 772 Fed. Appx. at 898 (emphasis added).
`
`The positioning of these components on the application server together with
`the application launcher on the client computer allows customization by
`both the administrator and the user in such a way as the installation can
`proceed on-demand with both sets of preferences. There has been no
`showing or determination
`that such a network architecture was
`conventional.
`
`
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 17 of 29
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`Id. at 899 (emphasis added). Because on-demand installation must precede execution, this
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`claim term should be limited such that preferences are obtained prior to (not during)
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`execution.
`
`
`
`“Configuration Manager Program”
`
`Defendants’ Proposal
`A program separate from
`the application program
`
`Plaintiff’s Proposal
`Ordinary meaning
`
`Term
`Configuration manager
`program
`
`(claims 2–3, 18–19, and 33–
`34 of the ’578 patent)
`
`
`Defendants’ proposed claim construction makes clear that the configuration
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`manager program and the application program are different programs. Although Uniloc
`
`has proposed “ordinary meaning” for this term, Uniloc’s infringement disclosures under
`
`Local Rule 16.6, identify the same web page as both the “configuration manager program”
`
`and the “application program.” Ex. G (Excerpts from Uniloc’s Rule 16.6 disclosures to
`
`Paychex); compare 3–5 (application program) with 51–53 (configuration manager
`
`program). Because Uniloc’s apparent position is inconsistent with the appropriate
`
`construction of this term in view of the intrinsic evidence, construction is required.
`
`The specification and even the abstract of the ’578 patent make abundantly clear
`
`that the configuration manager program is unique from the application program:
`
`Management of configurable applications programs on a network is
`provided by using two program files for each configurable application
`program. The two program files are provided to a network server station
`which operates as the on-demand server for software deployment and may
`also act as the application server. The on-demand server makes the first
`(configuration manager) program available to an administrator to obtain
`preferences for the configurable preferences of the application program
`which have been designated as administrator preferences….
`
`’578 patent at Abstract (emphasis added); see also id. at 2:40–43 (“a configuration manager
`
`program associated with the application program is distributed to a second client coupled
`
`
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 18 of 29
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`to the network.”) (emphasis added). Accordingly, Plaintiff’s transparent attempt to read
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`out the limitation of a separate configuration manager program should be rejected.
`
`
`
`“Registration Operations”
`
`Term
`Registration operations
`
`(all asserted claims of
`the ’293 patent)
`
`Defendants’ Proposal
`Operations on the target
`on-demand server that
`include specifying a set of
`users who may access the
`application program
`associated with the file
`packet.
`
`Plaintiff’s Proposal
`Recording at the target on-
`demand server information
`about authorized users of
`the application program.
`
`
`
`The parties agree to the following extent: the registration operations occur at the
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`target on-demand server and the registration operations involve user information. However,
`
`“registration operations” are not just any operations involving “information about
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`authorized users.” On the contrary, “registration” makes an association—a critical detail
`
`that Uniloc’s construction ignores.
`
`In the ’293 patent, “registration” for an application program makes that application
`
`program “ready for use” by a user. ’293 patent at 18:10–33 (“Accordingly, with a request
`
`from a single Tivoli™ server 20 location, an administrator both sends a new application
`
`package to all supported on-demand servers and installs the program and configures
`
`(registers) it to be available for use.”) (emphasis added). This language is clear that
`
`registration of an application and “configuration” of an application mean the same thing in
`
`the ’293 patent. The patent explains that registration (configuration) operations involve
`
`providing “control specifications defining which users and groups are authorized to access
`
`the new or update application.” Id. at 13:4–25. In the preferred embodiment, the
`
`registration of users and groups for specific applications is based on “definitions of users
`
`and groups that will access the system and the specific application” and on “license policies
`
`
`
`13
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`Case 1:19-cv-11278-RGS Document 33 Filed 01/23/20 Page 19 of 29
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`describing the licensing characteristics for the new application.” Id. at 13:4–21. This data
`
`could be entered manually by an administrator or, as is relevant to the claims of the ’293
`
`Patent, “obtained as an import file” delivered within a segment in a file packet. Id. at
`
`13:13–15, 13:21–23, 19:5–7, 19:22–34.
`
`In the “import file” embodiment, a file packet contains an “import file” with
`
`instructions to create or update a profile management list identifying application programs
`
`available for execution by users and “designating which applications are authorized with
`
`respect to individual users.” ’293 patent at 18:11–18; Fig. 8 (reference number 120
`
`describes the last step as “update p