Plaintiff,
`
`Defendant.
`
`Plaintiff,
`
`UNILOC 2017 LLC,
`
`
`
`v.
`
`PAYCHEX, INC.,
`
`
`
`UNILOC 2017 LLC,
`
`
`
`v.
`
`ATHENAHEALTH, INC.,
`
`
`
`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`
`Civil Action No. 1:19-cv-11272-RGS
`
`
`
`Civil Action No. 1:19-cv-11278-RGS
`
`Defendant.
`
`
`RESPONDING BRIEF OF UNILOC ON CLAIM CONSTRUCTION AND INDEFINITENESS
`
`
`
`Uniloc 2017 responds below to the arguments in Defendant’s Joint Opening Brief On
`
`Claim Construction and Indefiniteness (“Def. Br.”).
`
`A.
`
`“Application launcher program”
`
`Uniloc 2017’s Construction
`computer program that launches, i.e., starts
`another program
`
`Defendants’ 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
`
`
`Ordinary meaning
`
`Defendants do not appear to dispute the ordinary meaning of this term is a “computer
`
`program that launches, i.e., starts, another program.”
`
`However, they ask the Court to impose two restrictions that would exclude from the
`
`claims certain application launcher programs that fall within the ordinary meaning. But courts
`
`1
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 2 of 21
`
`may only depart from the ordinary meaning of a claim term in two instances: lexicography and
`
`disavowal. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). Neither
`
`occurred here.
`
`Populate a user desktop
`
`First, Defendants would require the application launcher program to “populate a user
`
`desktop,” apparently because the ’578 patent describes one application launcher program that
`
`happens to do that. ’578 patent at 12:26-35. But the ’578 patent also describes several other
`
`application launcher programs that do not populate a user desktop. For example, in one
`
`embodiment, id. at 11:32-37, the user desktop is populated before the application launcher is
`
`even distributed. And in id. at 11:60-12:1, the specification discloses another embodiment in
`
`which the application launcher program does not populate the user desktop.
`
`
`
`As Dr. Shamos pointed out, Dkt. 34-2,1 ¶¶ 46-47 (“Shamos Decl.”), Defendants’
`
`construction introduces spurious concepts into the claim and contradicts the specification. “[I]t is
`
`axiomatic that a claim construction that excludes a preferred embodiment … is rarely, if ever
`
`correct and would require highly persuasive evidentiary support.” Anchor Wall Sys., Inc. v.
`
`Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003) (internal citations
`
`omitted).2
`
`
`1 All references to docket entries are from the -11272 action.
`
`2 In 2017, in the Texas action, the then owners of the ’578 patent (Uniloc USA Inc. and Uniloc
`Luxembourg S.A.) had agreed to include “populate a user desktop” in the construction. But, as
`noted above, that construction is clearly incorrect, as it would exclude various described
`embodiments. In this action, Uniloc 2017 is therefore insisting on the correct construction.
`
`Defendants cite statements from briefs to the Federal Circuit on the appeal in that action as to
`patent eligibility and also cite statements from that court. 772 Fed. Appx. 890 (2019); Def. Br. at
`7, 11, 18. But that appeal did not involve any issues of claim construction. Thus, statements in
`the briefs on that appeal and in the Federal Circuit’s opinion that describe one or more
`
`2
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 3 of 21
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`Execution at the server
`
`Second, defendants argue the intrinsic evidence would exclude application launcher
`
`programs that launch programs at the server.
`
`The Shamos declaration, however, methodically reviewed the entire ’578 patent,
`
`including the specification and the claims, and found no support for that position. Shamos Decl.,
`
`¶¶ 51-61. (As the ’578 patent issued on a first office action, there was no relevant prosecution
`
`history.) He pointed to the lack of any language in the patent that would exclude launching
`
`programs on the server. Finally, he found, as dispositive of the issue, a passage, 11:9-19,
`
`referring to a “client/server application program,” which is a clear reference to an application
`
`being run at a server.3 The patentees clearly intended to include all application launcher
`
`programs, including those that launch programs at the server.
`
`As to this issue, Defendants principally raise an estoppel argument, based upon the later
`
`prosecution history of a different patent. They argue that during the prosecution of an application
`
`that led to issuance of U.S. Patent No. 6,728,766 (“the ’766 patent”), a divisional of the ’578
`
`patent application, the applicants submitted an amendment on January 27, 2003, distinguishing a
`
`reference (Duvvoori) that had been cited against certain claims in that ’766 application. Def. Br.
`
`at 9-10. They argue that the way in which patentees distinguished that reference would create an
`
`estoppel as to the scope of claims in the ’766 patent, and that estoppel would carry back to the
`
`
`embodiments were not intended by the parties or that court to delineate the “metes and bounds”
`of the claims.
`
`3 As to the ’578 specification itself, defendants argue only that the ’578 patent’s mention of
`“delivering” applications supports their construction. Def. Br. at 9, citing ’578 patent at 6:2-5,
`6:51-53. But a person of skill in the art (POSITA) would read “deliver” as simply making an
`instance of the application available for execution, when demanded by a user. The cited passages
`do not support an argument that the patentees had disavowed or disclaimed application launcher
`programs that launch execution at the server.
`
`3
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 4 of 21
`
`already issued ’578 patent, because the ’766 patent application was a divisional of the ’578
`
`patent application.
`
`That presents two questions. First, did those later arguments create an estoppel even as to
`
`claims of the ’766 patent; and, if so, does the estoppel carry back to the claims of the already
`
`issued ’578 patent.
`
`As to the first, whether the arguments created an estoppel as to claims of the ’766 patent
`
`is doubtful. At the time of the amendment, the patentees were pursuing various claims, including
`
`dependent claims that expressly required a server that “provides an instance of the selected one
`
`of the application program to the client for execution,” but did not require an application
`
`launcher. Dkt.25-6 at Paychex_PTO_0000587 (claim 27). The patentees distinguished Duvvoori
`
`on multiple grounds, not simply on the ground that Duvvoori did not teach requesting “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.” Id. at Paychex_PTO_0000643.
`
`Applicants argued that Duvvoori only taught an agent process or a wrapper, and not an
`
`application launcher program at all. In context, the statements were thus not a clear disavowal of
`
`claim scope.
`
`So whether the argument would create an estoppel as to the ’766 patent is doubtful. But
`
`the more serious problem Defendants face is that the estoppel, if one existed, would not carry
`
`back to the ’578 patent.
`
`Because the ’766 patent application was a divisional of the application that led to the
`
`’578 patent, the prosecution history of that application could have relevance to construction of
`
`the ’578 patent. But the relevance is limited by Georgia-Pacific Corp. v. United States Gypsum
`
`Co., 195 F.3d 1322, 1333 (Fed. Cir. 1999), which states:
`
`4
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`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 5 of 21
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`[F]or [the patent owner] to be bound by the statement made to the PTO in
`connection with a later prosecution of a different patent, the statement would have
`to be one that the examiner relied upon in allowing the claims in the patent at issue.
`
`The statements Defendants would rely upon were made January 7, 2003, long after the
`
`’578 patent had issued, on November 27, 2001. So Georgia-Pacific would appear to fit the facts
`
`of this case like a glove.
`
`But that is not to say that post-issuance statements are always irrelevant. Defendants cited
`
`Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1306-07 (Fed. Cir. 2007), and
`
`Teva Pharms USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) as giving
`
`consideration to later statements. In addition, the majority opinion in Microsoft Corp. v. Multi-
`
`Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004), considered as relevant some statements
`
`made after an earlier patent has issued. But Microsoft acknowledged Georgia-Pacific held there
`
`could be no estoppel:
`
`In Georgia-Pacific, [w]e rejected the argument that the patentee was “bound by”
`statements made by the applicant in connection with a later application after the
`patent in suit had already issued …. We rejected the argument that the patentee was
`bound, or estopped, by a statement made in connection with a later application on
`which the examiner of the first application could not have relied.
`
`Here, the intrinsic record of the ’578 patent, namely, its specification and prosecution
`
`history, does not itself limit the construction of application launcher. And nothing in the portions
`
`of the prosecution history of the ’766 patent Defendants cite contradicts Dr. Shamos’s evidence
`
`the art’s use of “application launcher” to describe “a computer program that launches, i.e., starts,
`
`another computer program,” included its launching the program on either a client or server.
`
`Rather, Defendants’ argument does not appear to be directed at the meaning of the term
`
`to a POSITA. Instead, Defendants are arguing the later statements present a straightforward case
`
`of estoppel – in order to avoid a prior art reference, the patent owner made arguments that had
`
`5
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 6 of 21
`
`the effect of disclaiming a scope of coverage he would otherwise have obtained. As Microsoft
`
`acknowledged, Georgia-Pacific governs the situation where estoppel is argued, and that case
`
`would bar estoppel here.
`
`In any event, to the extent that the later panel decisions of the Federal Circuit on which
`
`Defendants rely are inconsistent with Georgia-Pacific, this Court must follow the earlier
`
`decision (here, Georgia-Pacific). Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757,765
`
`(Fed. Cir. 1988).
`
`Microsoft also provides a second reason to distinguish the statements on which
`
`Defendants seek to rely. In Microsoft, 357 F.3d at 1349 n. 7, the majority opinion distinguished
`
`statements in a prosecution history that “refer more specifically to the references cited against the
`
`claims of the [patent being prosecuted] only.” The majority limited the relevance of those
`
`statements to construction of the claims of the patent then being prosecuted, holding statements
`
`of that type could not be used to construe claims of other patents in the family.
`
`Thus, under Microsoft, statements in the prosecution history of the ’766 patent that refer
`
`to references cited only against claims of that patent cannot be cited to construe other patents,
`
`however related. The statements from the ’766 patent application’s prosecution that Defendants
`
`refer to clearly fall in that category, as they are statements distinguishing a prior art reference
`
`(Duvvoori) cited against only the claims of the ’766 patent.
`
`
`
`
`
`
`
`
`
`
`
`6
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`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 7 of 21
`
`B.
`
`“Application program”
`
`Uniloc 2017’s Construction
`ordinary meaning, which is software that
`performs tasks for an end-user
`
`
`Ordinary meaning
`
`Defendants’ 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
`
`Defendants do not appear to dispute “software that performs tasks for an end-user”
`
`accurately represents the ordinary meaning of the term. Nor do they point to anything in the
`
`intrinsic record of the ’578 patent that uses “application program” to mean anything other than
`
`“software that performs tasks for an end-user.” In general parlance, the term “application
`
`program” is used to distinguish the program from an operating system program. See Gannon
`
`Decl., Ex. 1, Shamos dep. at 43, ll. 1-3.
`
`Courts may only depart from the ordinary meaning of a claim term in two instances:
`
`lexicography and disavowal. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`
`Cir. 2014).
`
`Code associated with underlying program functions
`
`Defendants describe the following language, ’578 patent at 12:13-16, as “definitional”:
`
`Accordingly, as 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.
`
`The quoted statement, however, simply confirms the ordinary meaning. See Shamos Decl., ¶ 70.
`
`The immediately preceding paragraphs of the patent had described a (nonpreferred)
`
`embodiment in which the application program code was included as part of the application
`
`launcher. See ’578 patent at 11:39-41, 48-54. And later in that same paragraph, the patent recites
`
`an embodiment where the application is separate from the application launcher:
`
`7
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 8 of 21
`
`For example, the application launcher program… preferably does not include the
`code associated with the underlying application program
`
`Id. at 12:26-29.
`
`Given the surrounding context, describing two contrasting embodiments, the quoted
`
`statement simply means the specification generally will use “application program” in its
`
`conventional sense, rather than to include application launcher code as well. Lotus notes, a well-
`
`known “application program” is simply cited as an example of “the code associated with
`
`underlying program functions.”
`
`Browser issues
`
`Defendants seek to exclude from the ordinary meaning application programs that are
`
`browsers or that execute within a browser window. But Defendants cite nothing in the intrinsic
`
`record of the ’578 patent that would support that exclusion. “Browser window” does not appear
`
`anywhere in the intrinsic evidence and “browser interface” is used only once in the specification,
`
`id. at 10:56-63, without any indication that the browser window is required to be separate from
`
`the application program. Shamos Decl., ¶ 71. “An application program is able to be invoked by a
`
`user to perform functions for the user. You can … have applications that run in a browser. And
`
`there are many of those.” Gannon Decl., Ex. 1, Shamos Dep. at 43, ll. 1-8.
`
`Nothing in the ’578 patent contains, or otherwise supports, the notion that an application
`
`program cannot execute within a browser window. Shamos Decl., ¶ 72. In fact, the ’578 patent at
`
`8:7-20, describes an exemplary situation in which the application is literally executed within the
`
`browser window. Shamos Decl., ¶ 73.
`
`Defendant’s only support for their argument is a statement in the prosecution history of
`
`the ’466 patent. But that argument encounters serious legal and factual problems.
`
`
`
`8
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 9 of 21
`
`Legal problems
`
`The separate applications for the ’578 and the ’466 patent were not continuations,
`
`divisionals, or continuations-in-part of each other. They were filed as independent, patently
`
`distinct applications, on the same date. Shamos Decl., ¶ 31. Further, the inventive entities
`
`differed: the ’578 application included an inventor (Kaminsky) who is not an inventor on the
`
`’466 application; the ’466 application, in turn, included inventors (McGarvey and Salahshour)
`
`not on the ’578 application. See Gannon Decl., Ex. 2. Even though the applications were co-
`
`pending, shared some common inventors, and were commonly assigned, the prosecution history
`
`of one cannot limit the claims of the other.
`
`Abbott Laboratories v. Dey, L.P., 287 F.3d 1097, 1105 (Fed. Cir. 2002) is on point:
`
`It is true that the ’839 and ’301 patents are commonly owned by Abbott, and the
`inventor of the ’839 patent is one of the three inventors of the ’301 patent. However,
`the ’839 patent was not filed as a continuation, continuation-in-part, or divisional
`application of the ’301 application. These applications have no formal relationship
`and were presented to the patent office as patentably distinct inventions. ... Under
`these circumstances, we do not see a basis for concluding that statements made
`about the characteristics of the surfactant claims by the ’301 patent should be
`attributed to the improved surfactant claims by the ’839 patent, simply because the
`applications had a common assignee, one common inventor, and similar subject
`matter. We therefore conclude that the above-quoted statements from the
`prosecution history of the ’301 patent do not create an estoppel with respect to the
`’839 patent.
`
`(Emphasis added).
`
`Defendants argue the application for the ’578 patent incorporated by reference the
`
`application for the ’466 patent, and thus the prosecution history of the latter patent should be part
`
`of the intrinsic record of the former. But although incorporation by reference would make the
`
`disclosure contained in the ’466 application part of the disclosure of the ’578 patent, it does not
`
`create a formal relationship of the sort discussed in Abbott. Equally important, incorporation by
`
`9
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 10 of 21
`
`reference of the application does not make any later part of the prosecution history intrinsic
`
`evidence.
`
`Goldenberg v. Cytogen, Inc., 373 F.3d 1158 (Fed. Cir. 2004), is on point. In that action,
`
`as with IBM here, Goldenberg filed two separate applications the same day, the ’261 and ’262
`
`applications. In a first office action, the examiner issued a double patenting rejection of the
`
`claims of the ’261 over the claims of the ’262, and then Goldenberg filed a response
`
`distinguishing them. Id. at 1161. The Federal Circuit held the court could “reference [] the
`
`contents of the ’262 application as it existed when Goldenberg distinguished” (emphasis added)
`
`it from the ’261 application in the office action response. The court analogized it to citing prior
`
`art, which makes that prior art intrinsic evidence. Thus “the district court was entitled to treat the
`
`’262 application as part of the intrinsic evidence of the [’261 application] patent when construing
`
`the claim terms.” Id. at 1168.
`
`However, the Federal Circuit held the district court erred in considering later portions of
`
`the file history as intrinsic evidence:
`
`While the content of the ’262 application at the time it was distinguished from the
`’261 application constitutes part of the prosecution history..., subsequently added
`new matter is not similarly incorporated.
`
`Id. The court went on to describe the significance of its ruling:
`
`The ’261 and ’262 applications were filed separately and therefore lack the
`formal relationship necessary for free license to use the contents of the ’744
`patent and the prosecution history when construing the claims of the ’559
`patent. ... While the ’262 application was distinguished from the scope of the ‘261
`application’s claims, incorporating its contents at that point into the intrinsic
`evidence of the ’559 patent, the relevant passages from the ’744 patent relied on by
`the district court are new matter added by the ‘continuation-in-part application.
`Consequently, the passages are not part of the intrinsic evidence of the ’559 patent.
`... Absent a formal relationship or incorporation during prosecution, the new-matter
`content of the ’744 patent is not available to construe the claims of the ’559 patent,
`and the district court erred in relying on them.
`
`
`
`
`
`10
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 11 of 21
`
`Id. at 1167-68 (bold emphasis added; italics in original; citations omitted).
`
`
`
`
`
`Factual problems
`
`Even if the ’466 and ’578 patents had had a familial relationship, the patentees’
`
`arguments in the ’466 prosecution history on which Defendants rely, Def. Br. at 5, would not
`
`support narrowing of the ’578 patent’s claims beyond their ordinary meaning.
`
`
`
`Defendants cite as their sole support for their proposed construction of “application
`
`program” the statement in the prosecution history of the ’466 patent:
`
`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.
`
`Def. Br. at 5. But the statement was not directed to the meaning of “application program.” The
`
`applicants were simply explaining the claimed invention of the ’466 patent executed locally
`
`at the client.
`
`All the claims of the ’466 patent, Gannon Decl., Ex. 2, contain the language “provid[e]
`
`an instance of [the selected] application program [] to the client for execution responsive to the
`
`selection” (emphasis added). See, for example, Dkt. 33-2 at Paychex_PTO-0000168-177. That
`
`language does not appear in the claims of the ’578 patent (or the claims of the ’293 patent). The
`
`claims of the ’578 and ’293 patents, normally construed, would thus include all applications,
`
`including those executed within the browser window.
`
`The statement on which Defendants rely, made during the prosecution of the ’466 patent,
`
`was intended to describe the invention of the claims of that patent, which literally require
`
`“providing an instance of the … application… to the client for execution,” seemingly ruling out
`
`– for those claims – executing an application remotely within the browser window.
`
`11
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 12 of 21
`
`Because the statement appears to be simply describing features mandated by the specific
`
`limitations of the claims in the ’466 patent prosecution history, a POSITA would not understand
`
`the statement of the ’466 patent inventors as applying to inventions claimed in the ’578 and ’293
`
`patents, which do not have the features the statement describes. Because the claims of the other
`
`patents omit any requirement of providing an instance of the application for execution locally at
`
`the client, the statement Defendants rely upon would have been untrue if it had appeared in the
`
`prosecution history of the other two patents.
`
`As Dr. Shamos has testified, the claims of the ’578 patent do not exclude an application
`
`that executes within the browser window, and the specification of that patent includes an
`
`embodiment that literally executes within the browser window. Shamos Decl., ¶¶ 72-73.
`
`Similarly, the claims of the ’293 patent do not relate at all to where or how applications are
`
`executed, but only to transmitting applications from a network management server to an
`
`intermediate server. There would have been no reason for the inventors to impose a limitation –
`
`or even to mention – a feature not in the claims, and thus irrelevant to the invention or to any art
`
`cited during the prosecution of those patents.
`
`C.
`
`“Configuration manager program”
`
`Uniloc 2017’s Construction
`ordinary meaning
`
`Defendants’ Construction
`A program separate from the application
`program
`
`
`
`
`Defendants do not appear to contest the ordinary meaning of “configuration manager
`
`program” is “a program that manages configurations.”
`
`
`
`Defendants would, however, impose the restriction that the configuration manager cannot
`
`be part of program it is configuring. But the specification itself has embodiments that contradict
`
`Defendants’ construction. Dkt. No. 34-2. Shamos Corrected Decl., ¶¶ 79-85.
`
`12
`
`

`

`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 13 of 21
`
`
`
`Defendants cite only a portion of the Abstract, which does not state the configuration
`
`manager program cannot be part of the program is configuring. Although the specification
`
`discloses an embodiment in which the application programs and configuration program can be
`
`different, it is improper to import an example from the specification into the claim. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). (“[A]lthough the specification often
`
`describes very specific embodiments of the invention, we have repeatedly warned against
`
`confining the claims to those embodiments.”)
`
`
`
`The term is used in its ordinary sense in the ’578 patent. It is common for an application
`
`program to contain a component used to configure the application program. Microsoft Word, for
`
`example, operates this way. A Word user is able to configure the program to his taste by
`
`selecting ”Options,” whereupon an extensive set of customizable parameters can be specified. A
`
`POSITA would recognize that the “configuration program” for Word is code that resides and
`
`executes within the “application program.”
`
`D.
`
`“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”
`
`
`
`Uniloc 2017’s Construction
`ordinary meaning
`
`Defendants’ 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
`
`
`
`Uniloc 2017 had proposed this term be given its ordinary meaning. As Uniloc 2017 reads
`
`the claim, an authorized user makes a request for execution of an application and the network
`
`then executes the application using the two obtained sets. That’s it.
`
`It appears from Defendant’s Brief they want to impose an additional requirement,
`
`namely, that execution not be initiated or launched until the sets are obtained. Thus, their
`
`13
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`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 14 of 21
`
`construction would exclude those embodiments of the invention in which preferences are
`
`obtained after initiation or launching, but before execution is completed.
`
`Defendants are attempting to import a limitation into the claim that is not justified,
`
`namely, that it is not “executing” that is a subject of the limitation but “initiating execution”, a
`
`phrase that does not appear in the broader claims but is separately claimed in certain dependent
`
`claims, e.g., claim 6. Defendants are attempting to read that limitation from the dependent claim
`
`into the claim from which it depends.
`
`Further, claim 1 is explicit that the “request” is” from an “authorized user[],” not
`
`necessarily from “the application launcher program.” Also, the Abstract of the ’578 patent makes
`
`clear that the execution can make use of stored values of the user and administrator preferences,
`
`or may “obtain” them before execution:
`
`The on-demand server then initiates execution of the application program using
`stored values for the user and administrator set preferences or, if no preference have
`yet been obtained for the particular user, obtains user preferences before initiating
`execution of the application program
`
`E.
`
`“File Packet”
`
`Uniloc 2017’s Construction
`package of one or more computer files
`
`Defendants’ 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 2017 proposed “package of one or more computer files,” and submitted Dr.
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`Shamos’s testimony to support that uncomplicated proposal.
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`Defendants say that the jury will not understand “package,” but that is not the case. A
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`package is one or more files sent together. It’s a simple idea.
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`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 15 of 21
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`By contrast, Defendants chose not to submit expert testimony. Instead, they presented
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`several pages of attorney argument in support of a complicated proposal a jury would not
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`understand. Further, their Brief misunderstands the technology.
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`Dr. Shamos explained in his deposition, Gannon Decl., Ex. 1 at 57-58, Uniloc 2017’s
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`proposal conforms with long-standing usage in the art:
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`[F]or decades people have referred to software packages. Software packages is
`generally a collection of programs that interact with one another in order to perform
`some function. … If we just use the word package, it means an application that
`consists of a package, a software package. … There are many ways of distributing
`software packages. Sometimes they’re small, sometimes they’re very, very large.
`So package was a term for a bunch of stuff that you have to put together in order to
`run an application.
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`Defendants argue that the patent describes some file packages that include command
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`scripts, which defendants assert, without evidence, are not “files.” But they simply
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`misunderstood what scripts are. In his deposition, Dr. Shamos explained their error, id. at 62, 64:
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`A script is a file. Scripts are stored in files. They have to be scripts rather than
`regular programming code. … [F]iles are typically the way in which information is
`conveyed. Scripts, where’s the script come from? I write a script and I store it in a
`file, and I copy the file into whatever this package is that I’m sending. The script
`itself, it’s not hanging around loose in there; otherwise, you wouldn’t know where
`the script began and where the script ended. And so it’s a file.
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`The “objects” defendants point to are all computer files. An application program is a file,
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`a configuration manager applet is a file containing the code for the applet, an “import file” is
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`obviously a file, and a “command script” is a file. Even “information” is transmitted in the form
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`of a computer file. A “profile manager import call” refers to the “PMImport command script”
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`disclosed in the ’293 patent at 19:25.
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`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 16 of 21
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`F.
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`“Registration Operations”
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`Uniloc 2017’s Construction
`recording at the target on-demand server
`information about authorized users of the
`application program
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`Defendants’ 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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`
`
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`As the proposed constructions do not appear to differ meaningfully, to reduce the number
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`of terms to be construed Uniloc 2017 will agree to “operations that include specifying a set of
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`users,” if by “specifying the set of users” is meant either directly or indirectly (as through
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`encryption) specifying a human user or a particular machine, or specifying a rule that will
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`determine who will be authorized to access the application program. The other portions of
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`Defendants’ proposed construction (“on the target on-demand server” and “associated with file
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`packet”) are redundant of other language in the claims.
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`G.
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`Indefiniteness
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`
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`Although Local Rules 16.6(e)(1)(c) seemingly requires the parties to present no more
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`than 10 claim terms for construction, Defendants have taken the position there is no limit on the
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`number of indefiniteness issues they could present. See Foster Decl., Ex. C.
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`
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`
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`Means-plus-function (MPF) terms
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`Earlier in the action, defendants had suggested they would argue certain unspecified
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`claims of the ’578 and ’293 patents that contained MPF terms were indefinite because the patents
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`did not adequately disclose corresponding structure. Although those two patents together contain
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`62 separate MPF terms, Defendants did not inform Uniloc 2017 until January 20 which of those
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`62 they would decide to argue. That was three days before the deadline for filing initial Claim
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`Construction Memoranda.
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`Case 1:19-cv-11278-RGS Document 45 Filed 02/20/20 Page 17 of 21
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`
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`In that January 20 communication, Defendants notified Uniloc 2017 it had selected five
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`“exemplary” MPF terms, and their brief would “focus” on those terms. But it seems they have
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`changed their minds.
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`
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`They stated that because they did not have “Uniloc’s positions in hand,” they planned to
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`serve their opening brief without those positions. But Unilo