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`trXHIBIT D
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`Case 1:19-cv-11278-RGS Document 45-5 Filed 02/20/20 Page 2 of 2
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`Foster, James J.
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`From:
`Sent:
`lo:
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`Cc:
`Subject:
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`Foster, James J.
`Tuesday, January 21,2020 1:48 PM
`'Chassman, Peter J.'; 'Steven Katz'; amartin@burnslev.com; Forbes, Michael J.; James
`Sebel
`Ercolini, Michael; Tollefson, Brian A.; uniloc; Gillis, Maria
`RE: Uniloc v. Paychex (1:1-9-cv-1L272-RGS): 2019-1.2-12 Uniloc Disclosure of claim terms
`-Paychex
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`ln the Texas action, the parties filed with the court their respective proposals as to the corresponding structures for the
`means-plus-function terms. You may use those in your opening brief. JJF
`
`From: Chassman, Peter J. [mailto:PChassman @ReedSmith.com]
`Sent: Tuesday, January 2L,2O2O 1:38 PM
`To: Foster, James J. <jfoster@princelobel.com>; 'Steven Katz' <katz@fr.com>; amartin@burnslev.com; Forbes, Michael
`J. <M Forbes@reedsmith.com>; James Sebel <sebel@fr.com>
`Cc: Ercolini, Michael<mercolini@princelobel.com>; Tollefson, Brian A. <btollefson@princelobel.com>; uniloc
`<uniloc@princelobel.com>; Gillis, Maria <mgillis@princelobel.com>
`Subject: RE: Uniloc v. Paychex (1:1-9-cv-LL272-RGS): 2OL9-L2-LZ Uniloc Disclosure of claim terms -Paychex
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`Jim,
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`I write on behalf of Defendants.
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`We disagree that there is any limitation on the number of indefiniteness issues that Defendants may present to the
`Court. lt simply makes sense to do so at the same time as claim construction, which this Court has done in the past. All
`of the indefiniteness contentions that we intend to raise with the Court were included in our invalidity contentions,
`served months ago, although we do not intend to pursue all of them. Here is a summary of what we intend to brief on
`indefiniteness:
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`a
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`a
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`a
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`Claims 20,22,24, 35,37 and 39-40 of the '578 patent are invalid as indefinite, because the Eastern District of
`Texas found that to be the case and Uniloc did not appeal, and, therefore, offensive collateral bars Uniloc from
`arguing otherwise.
`Although the Eastern District of Texas did not address the indefiniteness of claims 9,23,25, and 40 of the '578
`patent in the case referenced above, these claims are invalid as indefinite on the same bases as the list above.
`Claims 1,6-46 of the'578 patent and claims 72, t4, L7 and 'L9 of the '293 patent are indefinite because they
`contain computer implemented "mean-plus-function" terms for which the specification does not disclose an
`algorithm as required corresponding structure. Defendants brief will focus on five exemplary terms from those
`claims:
`o "means for installing...to the network" ('578)
`o "means for distributing...to the network" ('5781
`o "means for providing an instance...plurality of authorized users" ('578)
`o "means for specifying a source directory and a target directory for distribution of the application
`program" ('293)
`o "means for distributing the file packet to the target on-demand server to make the application program
`available for use by a user at a client" ('2931
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`1
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