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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Plaintiff,
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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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`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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`Plaintiff,
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`Defendant.
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`DECLARATION OF JAMES J. FOSTER RE CLAIM CONSTRUCTION
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`1.
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`I am trial counsel for Plaintiff, Uniloc 2017, and I submit this declaration to
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`provide various facts relevant to claim construction in these actions.
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`The Texas actions
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`2.
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`The two patents asserted in this action, the ‘578 and ‘293 patents, had been
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`previously asserted in a number of actions filed in 2016-17 in the Eastern District of Texas.
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`Those actions also included two other patents not asserted here.
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`3.
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`Eight of those cases were consolidated for purposes of claim construction. The
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`eight defendants formed a joint defense group, which appointed lawyers for two defendants to
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`3417739.v1
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`1
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`Case 1:19-cv-11278-RGS Document 45-1 Filed 02/20/20 Page 2 of 3
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`also represent the other defendants in discussions with me, as counsel for plaintiffs1 regarding
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`claim construction issues.
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`4.
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`The ‘578 and ‘293 patents have a total of 62 means-plus-function (MPF) terms (or
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`“claim elements”), and the other two patents had 41 additional MPF terms. For each, the local
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`patent rules of that district required the parties to identify the “structure(s), act(s) or material(s)
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`corresponding to that element.”
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`5.
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`That turned out to be a tedious process. But the parties filed with the court lists,
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`attached to this declaration as Exhibits A and B, identifying the MPF terms in the ‘578 and ‘293
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`patents, respectively, and their proposals as to corresponding structure for each. In those lists, the
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`defendants proposed structures for every MPF term, usually in considerable detail.
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`This Action
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`6.
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`At the beginning of the Markman process in this action, Defendants suggested
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`they were considering arguing that selected MPF terms were indefinite as lacking corresponding
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`structure. But they did not specify which of the 62 MPF terms they had in mind. Uniloc
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`responded by suggesting they simply file a Rule 7 motion setting forth whatever claims or other
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`indefiniteness arguments they settle on, and we would respond to that motion, as appropriate.
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`But they disagreed, and the Court allowed them to raise indefiniteness arguments as part of the
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`Markman process.
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`7.
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`The parties agreed that, subject to the Court’s approval, Defendants would get an
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`extra ten pages in their Opening Brief (to enable them to brief indefiniteness) and Uniloc would
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`get an extra ten pages in its Responding Brief (for the same purpose).
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`1 In those actions, plaintiffs were Uniloc USA, Inc. and Uniloc Luxembourg S.A., the previous
`owners of the patents.
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`2
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`Case 1:19-cv-11278-RGS Document 45-1 Filed 02/20/20 Page 3 of 3
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`8.
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`Because Local Rule 16.6(e)(1)(c) allows the parties to present no more than ten
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`claim terms for construction, and the parties had already identified six, on January 20 I wrote to
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`Defendants asking them “to identify four indefiniteness ‘terms’ on which you want the Court to
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`focus.”
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`9.
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`They wrote back the same day (see attached Exhibit C), disagreeing there was any
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`limitation on the number of indefiniteness issues they could present. In the same email, they
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`identified, for the first time, five “exemplary” MPF terms they intended to argue lacked
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`disclosure of corresponding structure.
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`10.
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`The email also mistakenly stated Uniloc would not identify corresponding
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`structures for those MPF terms. As that was not true, I wrote back immediately (see attached
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`exhibit D) to call their attention to the attached Exhibits A and B, which had been filed in Texas.
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`I told them they could use Uniloc’s proposals as to corresponding structure from those
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`documents in their opening brief.
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`February 20, 2020
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`/s/ James J. Foster
`James J. Foster
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`3
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