Case 1:19-cv-11278-RGS Document 34 Filed 01/23/20 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11272-RGS
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`Civil Action No. 1:19-cv-11278-RGS
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`Plaintiff,
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`Defendant.
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`Plaintiff,
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`UNILOC 2017 LLC,
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`v.
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`PAYCHEX, INC.,
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`UNILOC 2017 LLC,
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`v.
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`ATHENAHEALTH, INC.,
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`Defendant.
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`CLAIM CONSTRUCTION MEMORANDUM OF UNILOC 2017
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`Plaintiff (“Uniloc 2017”) has asserted claims from two IBM patents. The ’578 patent1
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`describes (what were in 1998) innovative methods of managing configurable application
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`programs (“applications”) on a computer network for a large enterprise. The ’293 patent2
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`describes a method of distributing applications from a central network management server
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`(“NMS”) to remote servers.
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`Both the ’578 and ’293 disclosures describe a computer network, which connects each
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`individual user’s computer terminal (“client terminal,” or simply “client”) to a remote server
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`1 U.S. Patent No. 6,324,578 (Ex. A). Another patent, U.S. 6,728,766 (“the ’766 patent”) issued as
`a divisional of the ’578 patent.
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` 2
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` U.S. Patent No. 7,069,293 (Ex. B), which was filed as a divisional of another patent, U.S.
`Patent No. 6,510,466 (“the ‘466 patent”), filed the same day as the ’578 patent, December 14,
`1998.
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`3391952.v1
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`responsible for supporting that client, as well as for supporting a number of other clients. The
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`network, in turn, connects the remote servers to a NMS. FIG. 1 of the ’293 patent graphically
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`illustrates this server/client arrangement:
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`An application is software written to perform a particular function for a user (as opposed
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`to system software, which is designed to operate the network). Common examples of
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`applications are word processing (e.g., Microsoft Word) and spreadsheet (e.g., Excel)
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`applications.
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`In 1998, designers of computer networks for large enterprises were confronted with the
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`problem of peripatetic users, i.e., users who log in from different clients at different times. IBM,
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`in these patents, describes innovative ways, circa 1998, to allow a peripatetic user to access the
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`user’s authorized applications from any client on the network, while maintaining the user’s own
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`selected preferences. The ’578 patent relates to obtaining user and administrator preferences for
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`application programs installed at a server and, responsive to a request from a user, executing the
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`application after an application launcher program is distributed to a client.
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`Network designers in 1998 were also confronted by the problems of efficiently distributing
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`applications throughout the enterprise, and of then frequently (and efficiently) updating those
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`applications, while maintaining consistency among users, as to both application and administrator
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`preferences. The ’293 patent relates to distributing applications from a NMS to other servers using
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`an associated file packet that includes a segment configured to initiate registration operations on
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`the server to make the application available for use.
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`Uniloc 2017 submits the accompanying Declaration of Dr. Michael Shamos on the issue
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`of what a person of ordinary skill in the art (POSITA) in December 1998 would have understood
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`to be the ordinary meaning of the various terms in dispute.
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`Claim Construction Issues
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`Uniloc below lists, in what it sees as the order of priority, the claim construction disputes,
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`beginning with the ’578 patent.
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`Claim 1 reads (emphasis added):
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`1. A method for management of configurable application programs on a
`network comprising the steps of:
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`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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`distributing an application launcher program associated with the
`application program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences associated
`with one of the plurality of authorized users executing the application
`launcher program;
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`obtaining an administrator set of the plurality of configurable preferences
`from an administrator; and
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`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 one of the plurality of authorized users.
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` “Application launcher program”
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`Uniloc’s Construction
`computer program that launches, i.e., starts
`another program
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`Paychex’s Construction
`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
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`All the claims of the ’578 patent require an “application launcher program.” Uniloc
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`requests the Court give this term its ordinary meaning, which is, quite simply, a program that
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`launches another program. Dr. Shamos lists contemporaneous sources that used the term in a
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`manner consistent with its ordinary meaning in the art of a “computer program that launches, i.e.,
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`starts, another program.” Shamos Decl., ¶¶ 41-44.
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`Defendants propose a construction that would exclude programs that launch programs
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`resident on a server. But Dr. Shamos cites programs -- contemporaneously described as
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`“application launcher programs” -- that did exactly that. Id., ¶¶ 43-44, 48-50. Defendants’
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`construction would thus depart from the ordinary meaning.
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`Courts may only depart from the ordinary meaning of a claim term in two instances:
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`lexicography and disavowal. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
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`Cir. 2014). Where (as here) nothing in the specification indicates the patentee acted as his own
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`lexicographer, and nothing in the intrinsic record clearly and unambiguously limits the invention
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`to a particular form or configuration, the court may not depart from the term’s plain meaning.
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`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir.
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`2001).
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`Dr. Shamos’s review of the intrinsic record of the ’578 patent finds no support for
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`Defendants’ departure from the ordinary meaning of the term. The ’578 patent describes an
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`environment where applications can be executed on the server, as well as on clients. Id., ¶¶ 25-
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`30. In particular, he finds nothing that would exclude “application launcher programs” that
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`launch applications resident on a server. Id., ¶¶ 48-63.
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`In support of his opinion, Dr. Shamos points out: (1) the claims of the ’578 patent do not
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`specify where an application program is executed, id., ¶ 52; (2) nothing in the specification
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`would indicate the term would be used in a manner other than its ordinary meaning, id., ¶ 53;
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`(3) the advantages the invention of the patent provides are independent of where an application is
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`executed, id., ¶ 54; (4) the “Summary of the Invention” does not limit where applications are
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`executed, id., ¶ 55; (5) the “Detailed Description of Preferred Embodiments” lists various
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`embodiments, only one of which is executed at the client (rather than the server), which the
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`patent refers to as an “alternative,” id., ¶¶ 56-57; (6) the ’578 patent’s figures depict distribution
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`of an application launcher to clients, but not distribution of an application, id., ¶ 58-59; (7) that
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`client requests are coming from a variety of different operating systems strongly suggests the
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`applications would be executed at the server, id., ¶ 60.
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`Finally, Dr. Shamos found dispositive the reference in the specification to “client/server
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`application program,” as it clearly refers to an application being run at a server for the benefit of
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`the client. Id., ¶¶ 61-62.
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`Defendants’ proposed construction not only excludes all systems that execute
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`applications at the server, it does not cover a described embodiment that executes applications at
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`the client. Id., ¶¶ 46-47. See Dkt. 1-1 (’578 patent) at 14:32-34. “A claim construction that
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`excludes a preferred embodiment … is rarely, if ever correct.” Anchor Wall Sys., Inc. v.
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`Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed.Cir.2003) (internal citations
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`omitted).
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` “Application program”
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`Uniloc’s Construction
`ordinary meaning, which is software that
`performs tasks for an end-user
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`Paychex’s Construction
`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
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`This is a well-known computing term that distinguishes user programs from operating
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`system programs. Shamos Decl., ¶¶ 64, 68. Defendants seek to exclude from the construction
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`application programs that are browsers or that execute within a browser window, even though
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`they are commonly referred to in the art as “application programs.”
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`An application is software written to perform a particular function for a user—as
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`opposed to system software, which is designed to operate the network. The term “application
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`program” has been construed by several courts as “software that performs tasks for an end user.”
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`See, e.g., Seven Networks Inc. v. Visto Corp., 2006 U.S. Dist. LEXIS 93870 (E.D. Tex., Dec. 29,
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`2006); Rembrandt Technologies, L.P. v. Comcast Corp., et al., 512 F. Supp. 2d 749 (E.D. Tex.
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`2007).
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`Nothing in the ordinary meaning of “application,” nor any other language in the asserted
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`claims of the ’578 and ’293 patents, if given its ordinary meaning, would rule out a browser or a
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`program executed within the browser window.
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`Dr. Shamos, in his declaration, ¶¶ 65-66, 71-74, testifies no portion of the ’578 patent
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`contains, or otherwise supports, a construction of claim 1 of the ’578 patent that would exclude
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`an application that executes within the browser window. In fact, he cites a passage from the
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`specification (8:7-20) of that patent that describes an exemplary situation in which the
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`application is literally executed within the browser window:
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`It is further to be understood that, in the JAVA™ environment, currently available
`web browser applications are known to those of skill in the art which provide a
`user interface and allow hardware independent communication such as that
`currently specified by Internet protocols. Thus, the application launcher programs
`may be applets which display the icon which are associated with a web browser
`Universal Resource Locator (URL) which points to the location of the applet to be
`executed. Upon selection of the icon displayed by the application launcher, the
`selected application is “launched” by requesting the URL of the application from
`the on-demand server. Such requests may be made utilizing conventional Hyper-
`Text Transfer Protocol (HTTP) communications or other suitable protocols.
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`Dr. Shamos further testifies, ¶ 73:
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`The above passage describes an exemplary situation in which the application is
`literally executed within the browser window. A Java applet is a hardware- and
`operating system-independent piece of code, written in a language known as Java
`bytecode, which is downloaded to a client and executed using software known as a
`“Java Virtual Machine” (JVM). All major browsers implemented a JVM;
`otherwise, they would not have been able to support webpages containing Java
`applets. Thus, Defendants’ construction of claim 1 would not read on this
`embodiment.
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`A construction that would result in no claim reading on a preferred embodiment is highly
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`suspect. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342-43 (Fed. Cir. 2001)..
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`Defendants may argue the inventors of the ’466 patent, during the prosecution history of
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`that patent, described Lotus Notes as an “application program [which] executes locally at the
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`client as a separate application from the browser interface [and] would not execute within the
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`browser window.” See Declaration of Michael J. Ercolini, Ex. 1 (10/23/2001 Response to
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`Office Action) at p. 2. However, Lotus Notes is merely a non-exclusive example of an
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`application program and that statement thus should not be read as applying to all application
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`programs. Shamos Decl., ¶¶ 67-68.
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`The statements on which Defendants would rely, made during the prosecution of the ’466
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`patent, were intended to describe the invention of the claims of that patent, which require
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`“providing an instance of the … application… to the client for execution,” seemingly ruling out -
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`for those claims - executing an application remotely within the browser window.
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`Moreover, because the ’466 patent is not formally related to the ’578 patent, statements in
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`the ’466 prosecution history do not form part of the intrinsic record of the ’578 patent. See, e.g.,
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`Abbott Laboratories v. Dey, L.P., 287 F.3d 1097, 1104-05 (Fed. Cir. 2002).
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`Further, because the statements appear to be simply describing features mandated by
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`claim limitations unique to the ’466 patent, a person of skill in the art would not apply those
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`statements to claims of the ’578 patent, which do not have the features the statements describe.
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`The claims of the ’578 patent do not require providing an instance of the application for
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`execution locally at the client. Thus, the statements Defendants would rely upon would have
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`been untrue if they had appeared in the prosecution history of the ’578 patent.
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`Similarly, the claims of the ’293 patent do not relate at all to where or how applications
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`are executed, but only to transmitting applications from an NMS to an intermediate server.
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`There would have been no reason for the inventors to impose a limitation - or even to mention - a
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`feature not in the claims, and thus irrelevant to the invention or to any art cited during the
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`prosecution of that patent.
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`“Configuration manager program”
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`Uniloc’s Construction
`ordinary meaning
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`Paychex’s Construction
`A program separate from the application
`program
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`Uniloc 2017 would give this term its ordinary meaning: a program that manages
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`configurations. Defendants, by contrast, would impose the restriction that the configuration
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`manager cannot be part of the program it is configuring.
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`There is no support in the intrinsic record for Defendants’ restriction. Shamos Decl., ¶¶
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`80-86. The specification itself has embodiments that contradict Defendants’ construction. Id., ¶¶
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`81-85.
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`“Executing the application program using the obtained user set and the obtained
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`administrator set responsive to a request from the one of the plurality of authorized users”
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`Uniloc’s Construction
`ordinary meaning
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`Paychex’s Construction
`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
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`This is also a term with a straightforward, easily understandable ordinary meaning. The
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`claim recites the user and administrator sets are used in executing the application program and
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`the request for execution comes from an “authorized user.”
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`Defendants would depart from the ordinary meaning by requiring the request to come
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`from the application launcher (rather than the user) and further require the application launcher
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`itself uses the two sets.
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`As Dr. Shamos points out, the intrinsic record does not support that restriction. Shamos
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`Decl., ¶ 88. Embodiments are disclosed in which the request does not have to come from the
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`application launcher program. Id. Thus, adding that restriction would cause the claim not to
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`read on a disclosed embodiment and would thus be improper. Anchor Wall Sys., Inc., 340 F.3d
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`at 1308.
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`“File packet”
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`Uniloc’s Construction
`package of one or more computer files
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`Paychex’s Construction
`A container file that contains one or more
`distinct components that may be individually
`accessed upon opening the container file
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`Uniloc’s construction is straightforward, and represents the ordinary meaning of the term.
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`Shamos Decl., ¶¶ 90-91.
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`By contrast, Defendants introduce terminology (“container,” “container file”) that is
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`vague, and foreign to the ’293 patent and its file history. Further, “component,” as used in the
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`’293 patent, is not used with reference to file packets and there is no disclosure a file packet must
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`have “distinct components.” Id., ¶ 92. Finally, there is no disclosure that portions of the file
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`packet must be “individually accessed,” and the specification contains no reference to “opening”
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`a file, or what might happen if a file is opened. Id., ¶¶ 93-94.
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`“Registration operations”
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`Uniloc’s Construction
`recording at the target on-demand server
`information about authorized users of the
`application program
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`Paychex’s Construction
`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
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`As Dr. Shamos describes, in the intrinsic record “registration” involves recording
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`information about authorized users. Shamos Decl., ¶ 97. No language in the intrinsic record
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`requires that “registration operations” must include specifying a set of users. Id., ¶ 98. That
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`construction would exclude an embodiment the specification discloses. Id., ¶¶ 99-100.
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`Case 1:19-cv-11278-RGS Document 34 Filed 01/23/20 Page 11 of 11
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`Dated: January 23, 2020
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`/s/ James J. Foster
`Paul J. Hayes
`James J. Foster
`Kevin Gannon
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Tel: (617) 456-8000
`Email: phayes@princelobel.com
`Email: jfoster@princelobel.com
`Email: kgannon@princelobel.com
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`ATTORNEYS FOR THE PLAINTIFF
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
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`served with a copy of this document via the Court’s CM/ECF system.
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`/s/ James J. Foster
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