Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 1 of 25
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`UNILOC 2017 LLC,
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`Plaintiff,
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`vs.
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`Defendant.
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`PAYCHEX, INC.,
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`UNILOC 2017 LLC,
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`Plaintiff,
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`vs.
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`ATHENAHEALTH, INC.,
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`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
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`§
`§
`§
`§
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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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`DEFENDANTS’ JOINT RESPONSIVE BRIEF ON CLAIM CONSTRUCTION
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 2 of 25
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`TABLE OF CONTENTS
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`Page
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`I.
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`Introduction ........................................................................................................... 1
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`II.
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`Uniloc’s Improper Approach ............................................................................... 1
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`III. Construction of the Disputed Claim Terms........................................................ 4
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`IV.
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`Indefiniteness ....................................................................................................... 19
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`V.
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`Conclusion ........................................................................................................... 20
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`- i -
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 3 of 25
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003)....................................................................................11
`
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004)....................................................................................19
`
`Nike, Inc. v. Puma North America, Inc.,
`2019 WL 5457917 (D. Mass. 2019) ..............................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)......................................................................................2
`
`Rembrandt Patent Innovations, LLC v. Apple, Inc.,
`2017 WL 5632684 (Fed. Cir. 2017)...............................................................................2
`
`Sensor Elec. Tech., Inc. v. Bolb, Inc.,
`2019 WL 4645338 (N.D. Cal. Sept. 24, 2019) ............................................................19
`
`Sinorgchem Co., Shandong v. Int’l Trade Comm’n,
`511 F.3d 1132 (Fed. Cir. 2007)......................................................................................9
`
`TVIIM, LLC v. McAfee, Inc.,
`851 F.3d 1356 (Fed. Cir. 2017)....................................................................................11
`
`Uniloc USA, Inc. v. ADP, LLC,
`772 Fed. Appx. 890 (Fed. Cir. 2019) .............................................................5, 8, 11, 18
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................1, 2
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`
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`- ii -
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 4 of 25
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`I.
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`Introduction
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`Defendants Paychex, Inc. and athenahealth, Inc. (collectively, “Defendants”)
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`respectfully submit this responsive brief in support of their proposed constructions of
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`disputed terms and phrases in United States Patent Nos. 6,324,578 (“the ’578 patent”) and
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`7,069,293 (“the ’293 patent”).
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`II.
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`Uniloc’s Improper Approach
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`After serving a disclosure of claim terms and proposed constructions for only two
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`claim terms, see Plaintiff’s Disclosure of Claim Terms & Proposed Constructions, served
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`December 12, 2019, Exhibit A, Uniloc filed a scant seven and a half pages of claim
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`construction argument, which largely offloaded the heavy lifting to the declaration of its
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`expert, Dr. Shamos. See generally Uniloc’s Opening Brief (Dkt. No. 26).1 In at least two
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`basic respects, Uniloc’s approach violates the rules of claim construction.
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`First, Uniloc’s approach violates the fundamental rules of claim construction by
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`looking to extrinsic evidence when the claims can and should be construed by intrinsic
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`evidence. Dr. Shamos’ declaration is itself extrinsic evidence. Here, a declaration was
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`unnecessary, because the disputed claim terms can be construed from the intrinsic record.
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`In Vitronics Corp. v. Conceptronic, Inc., the Federal Circuit expressed the general rule that
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`extrinsic evidence should only be used where the intrinsic evidence leaves the meaning of
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`the claim ambiguous: “In most situations, an analysis of the intrinsic evidence alone will
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`1 Uniloc has filed an unopposed motion to substitute a corrected declaration of Dr. Shamos,
`which the Court granted. See Docket Nos. 34 and 35. Defendants agreed not to oppose
`the correction to the declaration, provided that Uniloc did not use Defendants’ agreement
`as a basis for justifying the deposition testimony and exhibit for which the Court granted
`Defendants’ motion to strike. Docket No. 33 (Order). The present brief cites to the
`substituted Corrected Declaration of Dr. Shamos (“Cor. Shamos Dec.”), Docket No. 34-2,
`in which the numbering of some paragraphs differs from that in Dr. Shamos’ original
`declaration.
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`1
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 5 of 25
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`resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to
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`rely on extrinsic evidence. In those cases where the public record unambiguously describes
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`the scope of the patented invention, reliance on any extrinsic evidence is improper.” 90
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`F.3d 1576, 1583 (Fed. Cir. 1996). As “stated in Vitronics, the specification ‘is always
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`highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single
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`best guide to the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1315 (Fed. Cir. 2005) (quoting Vitronics, 90 F.3d at 1582). More recent cases continue to
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`apply the Vitronics holding. In Rembrandt Patent Innovations, LLC v. Apple, Inc., 2017
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`WL 5632684, *4 (Fed. Cir. 2017), the Federal Circuit held that the district court had
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`properly disregarded the patentee’s expert testimony on claim construction that was
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`contrary to the construction supported by the intrinsic evidence. The court found that the
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`specification was clear in determining the scope of the claims.
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`Again, Dr. Shamos’ declaration, in and of itself, is extrinsic. Although the Local
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`Rules permit proper declarations, Dr. Shamos’ declaration is improper to the extent that it
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`opines that Uniloc’s proposed construction is consistent with unrelated patents, articles,
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`and a dictionary to attempt to argue that a term in the patents-in-suit was used similarly.
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`See, e.g., Dkt. No. 34-2 (Cor. Shamos Dec.) at ¶¶ 43, 48, 64. There is a difference between,
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`on the one hand, describing the state of the art at the time of the alleged invention (proper
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`for an expert), and, on the other hand, opining that Uniloc’s proposed construction was
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`consistent with a cherry-picked extrinsic reference (improper).
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`In addition, to a large extent, Dr. Shamos’ declaration simply adopts Uniloc’s
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`attorney argument, and such testimony is unhelpful to the Court. His declaration also
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`improperly, repeatedly paraphrases and interprets the intrinsic record. See, e.g., Dkt. No.
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`2
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 6 of 25
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`34-2 (Cor. Shamos Dec.) at ¶¶ 46, 47. That, too, is a far cry from explaining the state of
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`the art. The Court is well able to read the intrinsic record without Uniloc’s expert’s
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`guidance. In Nike, Inc. v. Puma North America, Inc., 2019 WL 5457917, *3 (D. Mass.
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`2019) the district court refused to rely on accused infringer’s expert declarations submitted
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`on claim construction where the experts “cites no authority for his opinions other than the
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`intrinsic record of the patents about which he opines and makes no reference to any subject
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`matter outside the intrinsic record” and did “not explain the state of the art at the time of
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`the claimed inventions or how their experience or expertise leads them to construe the
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`disputed claim terms in a way that is different from the way in which the terms might be
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`construed by a layperson who reads them in the context of the patent claims, the
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`specification, and the prosecution history.” The court held that “because the intrinsic
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`record before the Court suffices to permit the Court to determine the meaning of the
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`disputed claim terms, the Court does not rely on the declarations of Puma's proffered
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`experts to construe the disputed claim terms.” Id.
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`Even if the Court were to consider, Dr. Shamos’ declaration, Dr. Shamos admitted
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`that, although Uniloc’s counsel had provided legal principles to apply, he had not been
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`provided with the tools to weigh the relationships between intrinsic and extrinsic evidence:
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`Q. What instructions, if any, were given to you about the legal
`principles to be used in a situation where a claim term could be
`construed based upon the intrinsic evidence alone?
`A. I don't think that there was specific instruction given to me by
`counsel in this case on that issue.
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`Ex. B (Shamos Dep.) at 81:17–23. See also id. at 80:19–81:14. Even if it were proper for
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`an expert to interpret the intrinsic record and to cherry pick extrinsic references for a
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`3
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 7 of 25
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`purpose other than to show the state of the art, it is apparent that Dr. Shamos was not
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`equipped with the tools to weigh that evidence.
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`III. Construction of the Disputed Claim Terms
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`“Application Program(s)”
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`Term
`Application program(s)
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`(all asserted claims of both
`patents-in-suit)
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`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
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`Plaintiff’s Proposal
`Ordinary meaning, which
`is software that performs
`tasks for an end-user
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`
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`Defendants’ proposed construction is based on clear definitional language in the
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`patent specifications and on the prosecution history for the parent of the ’293 patent.
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`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,
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`Docket No. 25-1 at 14–23 (E.D. Tex. Aug. 16, 2017).
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`Uniloc’s opening brief cites to cases that construed the term “application program”
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`in connection with other, unrelated, patents, but does not even acknowledge that a court
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`has construed that term in these patents exactly as proposed by Defendants. Id. While not
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`binding on this Court, the Eastern District’s construction of the term in view of the same
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`intrinsic evidence is certainly more persuasive than constructions informed by unrelated
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`extrinsic references. Moreover, in this case, Uniloc initially proposed nearly the same the
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`construction that Defendants now propose:
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`4
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 8 of 25
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`Ex. A at 1. In this construction, Uniloc contended that the code for the application program
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`is separate from a browser interface. Uniloc abandoned that position by the time of its
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`January opening brief.
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`Dr. Shamos opined in inter partes review proceedings that it is common in the
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`industry for an “application program” to be distinguished from an “applet,” “plug-in,” or
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`“browser extension” which may also “perform tasks for a user” but is not an application
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`program because it executes only within a web browser. See Google LLC v. Spring
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`Ventures, Ltd., IPR 2017-01653, Ex. 1052 (Declaration of Michael Shamos), Ex. C at
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`¶¶ 64–72 (describing plug-ins, applets, and browser extensions as “software that add[s]
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`additional functionality to an existing application”).
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`As Dr. Shamos previously explained in his Google v. Spring Ventures declaration,
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`when an applet is run in a browser, the browser is the application, and not the applet. Thus,
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`the applet enhances the functionality of the browser, but is not itself an “application.” This
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`distinction is important because browsers are locally stored on the client computers.
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`Browsers are not downloaded on-demand when a user desires to execute the browser. On
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`the other hand, in the patents-in-suit, an application launcher causes an on-demand server
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`to install an application for execution on a client. See Uniloc USA, Inc. v. ADP, LLC, 772
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`Fed. Appx. 890, 898 (Fed. Cir. 2019) (“The positioning of these components on the
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`application server together with the application launcher on the client computer allows
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`customization by both the administrator and the user in such a way as the installation can
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`proceed on-demand with both sets of preferences.”) (emphasis added).). The entire purpose
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`and benefit of the invention is lost if the bulk of the application—the browser prior to applet
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`enhancement—must already be resident at the client.
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`5
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 9 of 25
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`This distinction — between applications and non-applications that execute in a
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`browser window — previously noted by Dr. Shamos is the exact same distinction that the
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`patent applicants made in the intrinsic record here. As discussed in detail in Defendants’
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`Opening Brief, the applicant made clear during prosecution of the ’528 application (which
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`issued as the ’466 patent) that the application launcher program (described as an “applet”
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`in some embodiments) “interacts with a user browser interface,” but the “application
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`program” “executes locally at the client as a separate application from the browser
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`interface.” Docket No. 25-2 at Paychex_PTO_0000161; see Defendants’ Opening Brief,
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`Docket No. 25 at pp. 5–6.
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`Uniloc argues that the ’528 application is not intrinsic evidence to the ’578 patent,
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`Docket No. 26 at 7–8, but does not even cite the Eastern District’s specific rejection of that
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`argument, EDTX Markman Order, Docket 25-1, at 11–14, or explain any of the cases cited
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`by the Eastern District (which were discussed in Defendants’ Opening Brief at 9–10). For
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`the reasons cited in the EDTX Markman Order and in Defendant’s Opening Brief, the ’528
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`application is highly relevant intrinsic evidence that compels a conclusion that the
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`application program is a separate application from a browser interface and does not execute
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`within the browser window.
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`Uniloc also argues that the ’528 application would be relevant only to claims that
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`expressly require “an instance of the application for execution locally at the client.”
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`Uniloc’s Opening Brief at 8. That is incorrect for at least three reasons. First, as discussed
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`below in connection with construction of the term “application launcher program,” when
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`properly construed, all claims of the ’578 patent require local execution. Second, the ’528
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`patent applicant made the statement that Defendants quoted from the ’528 application
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`6
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 10 of 25
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`prosecution history in response to a rejection from the Patent Office of claims both with
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`and without an express “instance” limitation. See Docket 25 at 9–10. Third, the asserted
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`claims of the ’578 patent (like the claims in the ’528 application) include both claims with
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`and without an express reference to “an instance of the application.” Compare ’528 patent
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`at cl. 17 (“means for providing an instance of the application program”) with cl. 1
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`(“executing the application program”). Uniloc has provided no basis for construing the
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`term “application program” differently in these claims.
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`“Application Launcher Program”
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`Term
`Application launcher
`program
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`(all asserted claims of
`the ’578 patent)
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`
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`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
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`Plaintiff’s Proposal
`Computer program that
`launches, i.e., starts
`another program
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`Defendants’ proposed construction is based on the intrinsic evidence, and the Court
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`need look no further.
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`The United States District Court for the Eastern District of Texas adopted
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`Defendants’ proposed construction. Docket No. 25-1, EDTX Markman Order, Ex. A to
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`Defendants’ Opening Brief at 28–29; see also, id. at 24–32. As noted in Defendants’
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`Opening Brief, Uniloc argued in the Eastern District of Texas for a construction that
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`included “a program distributed to a client to initially populate a user desktop” and that the
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`program “request execution of the application program.” EDTX Markman Order, Ex. A at
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`23. In December 2019, Uniloc initially proposed that same construction in this case:
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`7
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 11 of 25
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`Ex. A at 1. Dr. Shamos admitted that even he endorsed that proposal. Ex. B (Shamos
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`Dep.) at 100:3–7 (“I did endorse the position because the issue of whether it had populated
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`desktop or not was not an issue in the case. So, you might say I let it slide. I didn’t
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`investigate whether it would be a requirement.”); see also id. at 98:20–100:2. Remarkably,
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`two months later, Uniloc says that is wrong and, instead, says that the term means
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`something different, by using Dr. Shamos’ declaration to try to make an end run around
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`the patent specification. But, neither Dr. Shamos’ declaration, nor his citation to cherry-
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`picked prior art references that were not of record in prosecution of the ’578 patent and that
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`may have used the term “application launcher” in a different way in a different context can
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`overcome the clear requirements of the intrinsic evidence and the context that they provide,
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`particularly in light of Uniloc’s successful arguments to the Federal Circuit that relied on
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`the more limited meaning of the term. Uniloc v. ADP, 772 Fed. Appx. at 898.
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`Neither Uniloc’s Opening Brief, nor the improper expert declaration upon which it
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`relies, provides or can provide any justification for Uniloc to back away from its previous
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`agreement to this portion of the construction.
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`At most, Dr. Shamos cites a portion of the ’578 patent specification that relates to
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`an unclaimed embodiment. Dkt. No. 34-2 (Cor. Shamos Dec.) at ¶ 46 (quoting ’578 patent
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`at 12:22–26). That passage states that, in certain embodiments, the application launcher
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`program may be the “entire program” or “a portion thereof.” Id. The asserted claims,
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`however, require 1) “installing an application program … on a server,” and 2) “distributing
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`an application launcher program associated with the application program to a client.” ’578
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`Patent at cl. 1 (accord cl. 16, 17, 32). Because the claims at issue here require installation
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`of an application program and distribution of a separate associated application launcher
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`8
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 12 of 25
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`program, the passage cited by Dr. Shamos has no bearing on the construction of
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`“application launcher program” in these claims. Sinorgchem Co., Shandong v. Int'l Trade
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`Comm'n, 511 F.3d 1132, 1138 (Fed. Cir. 2007).
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`Moreover, Uniloc’s brief ignores the arguments that Uniloc made to the Federal
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`Circuit – specifically that “[t]he application launcher causes the server to provide a user
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`interface that allows the user to specify user-configurable parameters of the application,
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`and to execute the application.” Uniloc USA, Inc. v. ADP, LLC, Case No. 18-cv-1132,
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`Docket No. 53 (Uniloc’s Opening Appeal Brief), Docket No. 25-4 at 47 (Fed. Cir. Aug.
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`22, 2018). Having argued this more limited construction to reverse an Alice challenge,
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`Uniloc cannot now disavow that the intrinsic record supports a construction requiring the
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`application launcher program to “provide a user interface” (i.e. “populate a desktop”). And
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`indeed, Dr. Shamos does not appear to have considered the Federal Circuit appeal of this
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`patent at all. See Dkt. No. 34-2 (Cor. Shamos Dec.) at 31–32 (materials considered).
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`Furthermore, Uniloc’s arguments in the Eastern District of Texas directly
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`contradict the portion of the Shamos Declaration upon which Uniloc relies here. Although
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`Dr. Shamos now opines that “there is no requirement for the application launcher program
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`to ‘populate a desktop,’” Id. at ¶ 46, in the Eastern District of Texas, Uniloc, itself, cited to
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`portions of the specification that describe just such a requirement:
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`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.
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`Uniloc USA, Inc. v. ADP, LLC, No. 2:16-cv-00741, Docket No. 210 (Plaintiffs’
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`Supplemental Opening Markman Brief), Docket No. 25-5 at 1–2 (footnotes omitted).
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`9
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 13 of 25
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`Uniloc’s positions cannot be reconciled; and Uniloc cannot run from court to court taking
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`different positions.
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`Dr. Shamos expressly acknowledged that he did not review the prosecution history
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`of the ’854 application (which was a divisional of the application that issued as the ’578
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`patent and itself issued as the ’766 patent) before making his declaration. Dkt. No. 34-2
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`(Cor. Shamos Dec.) at 31–32 (materials considered); Ex. B (Shamos Dep.) at 85:10–88:12.
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`Accordingly, Dr. Shamos’ Declaration should be given little or no weight, because it was
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`during prosecution of the ’854 application that the applicants explained what they meant
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`by the term “application launcher program” – software that is requested through the
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`desktop but executes locally at the client as a separate application from the browser
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`interface. See Defendants’ Opening Brief (Dkt. No. 25) at 9–10.
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`
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`“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
`
`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
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`set of preferences are obtained. ’578 patent at cl. 1, 10:6–15 (“The application program is
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`then executed at block 86 using the retrieved user set and administrator set of configurable
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`preferences.”) (emphasis added).
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`10
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 14 of 25
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`Moreover, Defendants’ construction simply captures the requirements (argued by
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`Uniloc) that the Federal Circuit found significant in finding the claims of the ’578 patent
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`were not abstract. See Uniloc v. ADP, 772 Fed. Appx. at 898 (“This positioning of the
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`components allows the application to launch in response to a request from one of the
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`plurality of authorized users pursuant to both sets of preferences. In other words, it allows
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`for on-demand installation of two-tier customized applications.”) (internal quotations and
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`modifications omitted). Uniloc’s Opening Brief completely ignores Uniloc’s own
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`arguments before the Federal Circuit, and Dr. Shamos’ declaration, which provides the
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`entire basis for Uniloc’s position, is completely inconsistent with the Federal Circuit’s
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`opinion and Uniloc’s arguments before that Court. See Cor. Shamos Dec. at 31–32 (mat’ls
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`considered).
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`In addition, claim 8, which depends from claim 1, further confirms that the
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`“executing” term in claim 1 refers to the initiation of execution rather than ongoing
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`execution, because claim 8 specifically refers to the antecedent executing step of claim 1
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`as the “initiating execution step.” ’578 Patent, claim 8.
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`Accordingly, the Court should adopt Defendants’ proposed construction, because
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`Uniloc cannot construe the term one way for Section 101 validity and a different way for
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`infringement. “Claim terms must be construed the same way for the purpose of
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`determining invalidity and infringement.” TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356,
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`1362 (Fed. Cir. 2017) (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
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`1330 (Fed. Cir. 2003)).
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`11
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 15 of 25
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` “Configuration Manager Program”
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`Term
`Configuration manager
`program
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`(claims 2–3, 18–19, and 33–
`34 of the ’578 patent)
`
`
`Defendants’ Proposal
`A program separate from the
`application program [that
`manages configuration]*
`
`*see below
`
`Plaintiff’s Proposal
`Ordinary meaning
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`Defendants’ proposed claim construction makes the important clarification that the
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`configuration manager program and the application program are different programs.
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`Although Uniloc relies exclusively on the Declaration of Dr. Shamos, the specification
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`passages cited by Dr. Shamos actually support Defendants’ position.
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`In Paragraphs 79–81, Dr. Shamos discusses the “administrator console 200” and
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`“configuration management servlet 210” as disclosed in the ’293 patent. Defendants agree
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`that these are clear examples of “configuration manager program[s]” within the
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`specification. However, Dr. Shamos is incorrect when he states that these are part of the
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`“application program,” because the actual language quoted by Dr. Shamos relates to a
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`separate administrator console, and has nothing to do with the application program:
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`Administrator console 200 provides a modified desktop interface for an
`administrator authorized user. The administrator desktop is preferably
`provided by a configuration management servlet which allows a user with
`administrative authority to modify system parameters and settings.
`Functions typically provided through the administrator console 200 could
`include adding or modifying users, user groups, software, customizing
`applications for users or groups, and granting or denying application access
`to certain users or groups.
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`’293 patent at 8:25–34 (emphasis added).
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`Likewise, in Figure 3 of the ’293 patent (reproduced below) configuration
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`management servlet 210 is shown as a part of “Web Server 204” and not part of the
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`application program.
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 16 of 25
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`’293 Patent, Fig. 3 (highlighting added). The ’293 patent explains the configuration
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`management is completely separate from the application program, and, instead, is part of
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`the web management server. ’293 patent at 10:25–37.
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`Dr. Shamos’ declaration also accuses Defendants of reading out “configuration
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`management” from the construction of this term. Dkt. 34-2 (Cor. Shamos Dec.) at ¶ 78.
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`Defendants recognize that, while their proposal was an attempt to isolate the dispute
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`between the parties as to whether the configuration manager program is separate from the
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`application program, it was incomplete because it omitted an aspect of what they intended.
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`A more complete construction would be “a program separate from the application program
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`that manages configuration.”
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`
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`“Registration Operations”2
`
`Term
`Registration operations
`
`(all asserted claims of
`the ’293 patent)
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`2 Uniloc’s arguments in its brief for this term offer no analysis of the intrinsic record and
`rely solely on the Shamos Declaration.
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`Plaintiff’s Proposal
`Recording at the target on-
`demand server information
`about authorized users of
`the application program.
`
`Defendants’ Proposal
`Operations on the target
`on-demand server that
`include specifying a set of
`users who may access the
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 17 of 25
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`
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`application program
`associated with the file
`packet.
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`The deposition testimony of Dr. Shamos confirmed what is clear from the context
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`of the claims and specification of the ’293 Patent — registration operations specify which
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`users are authorized to use the application program being registered. Dr. Shamos
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`acknowledged that one meaning of “registration” in the software context is “licensing
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`software so that only a registered user can use the software” and confirmed that “I think
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`that’s what register is about in the patents-in-suit.” Ex. B (Shamos Dep.) at 70:3–11.
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`Dr. Shamos further confirmed that, in the ’293 Patent, the registration operations
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`will specify what users can run the registered application. Id. at 72:11–73:8; see also ’293
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`Patent at 18:11–18, 18:30–36, 20:15–20. The registration may specify a set of users
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`directly, or the registration operations may provide a rule that would indirectly specify
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`which users may access the application program. One rule, for example, may be that
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`“anyone in the marketing group can use the sales database software.” Ex. B (Shamos Dep.)
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`at 72:11–73:8.
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`Accordingly, Dr. Shamos has confirmed that “registration” requires specifying
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`which users may access the application, and is not simply and merely storing information
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`about users. Such specification may be direct (“Authorized users: Bob and Jessica.”) or
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`such specification may be by rule (“Authorized users: the Marketing Department”).
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`But, contrary to Uniloc’s construction, the storage of user birthdays or password
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`reminder questions, for example, would clearly not be “registration operations” even
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`though they would fall within Uniloc’s vague construction of “information about”
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`authorized users.
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 18 of 25
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`In contrast, in the patent the “registration operations” for the distributed application
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`program makes the application program available for use by a set of users. See, e.g. ’293
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`Patent, 4:16–22, 18:10–36, claim 1.
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`Finally, in his Declaration at paragraphs 99–100, Dr. Shamos asserts that the
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`“registration operations” need not specify users because “[t]hat can be done by an
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`administrator.” There are three flaws in Dr. Shamos’ statement. First, it contradicts his
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`deposition testimony, in which Dr. Shamos acknowledges that registration operations
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`specify (directly or indirectly) the set of users who can run an application program. Ex. B
`
`(Shamos Dep.) at 70:3–11, 72:11–73:8. Second, an administrator may very well have a
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`role in assigning users to applications—and that role would eventually generate the file
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`packet for distributing application programs. Nobody is suggesting that the file packets
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`are produced without human input. Compare with ’293 Patent at 18:11–18, 18:30–36,
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`20:15–20. Third, the paragraph cited by Dr. Shamos in paragraph 99 of his Declaration
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`does not support Uniloc’s (or his) argument. That paragraph is referring to preparation of
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`the application launcher or other software on the desktop, and not on the on-demand server,
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`which is where the registration operations take place. This is clear from the final sentence
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`of the quoted paragraph omitted from Dr. Shamos’ quote in paragraph 99: “The database
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`is updated so that when individual users next bring up their end-user client desktop, they
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`will be provided an icon that may be used to launch the new application.” ’293 Patent,
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`9:4–7. Thus, the system contemplates a two-gate process—a user needs to be granted
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`access on his or her local machine to reach the on-demand server, and then the user must
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`be authorized at the on-demand server as well before the user can access the application.
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`Case 1:19-cv-11278-RGS Document 44 Filed 02/20/20 Page 19 of 25
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`The Court should adopt Defendants’ construction because it correctly requires that
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`the “registration operations” must be “operations on the target on-demand server that
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`include specifying a set of users who may access the application program associated with
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`the file packet.”
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`