Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 1 of 42 PageID #: 6422
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`§
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`§ CIVIL ACTION NO. 6:13cv447
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`§ JURY TRIAL DEMANDED
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`§
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`§ CIVIL ACTION NO. 6:13cv448
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`§ JURY TRIAL DEMANDED
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`REPORT AND RECOMMENDATION
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`SMARTFLASH LLC, et al.,
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`
`v.
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`SAMSUNG ELECTRONICS CO., LTD.
`et al.,
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`
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`Plaintiffs,
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`Defendants.
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`This Memorandum Opinion construes the disputed claim terms in United States Patent
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`Numbers: (1) 7,334,720; (2) 7,942,317; (3) 8,033,458; (4) 8,061,598; (5) 8,118,221; and (6)
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`8,336,772. Also before the Court are Defendants Apple, Inc., Robot Entertainment, Inc.,
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`KingIsle Entertainment, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
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`Samsung Telecommunications America, LLC, HTC Corporation, HTC America, Inc., Exedea,
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`Inc. and Game Circus LLC’s (collectively “Defendants”) Motions for Summary Judgment of
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`Indefiniteness (6:13-cv-447 Doc. No. 161 & 6:13-cv-448 Doc. No. 177) (“Motions for Summary
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`Judgment”). On July 17, 2014, the parties presented arguments on the disputed claim terms and
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`the Motions for Summary Judgment at the Markman hearing. For the reasons discussed below,
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`SMARTFLASH LLC, et al.,
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`v.
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`APPLE INC., et al.,
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`Plaintiffs,
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`Defendants.
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`Apple Exhibit 1023
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 2 of 42 PageID #: 6423
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`the Court resolves the claim term disputes as stated below and recommends that Defendants’
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`Motions for Summary Judgment of Indefiniteness be DENIED.
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`BACKGROUND
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`On May 29, 2013, Plaintiffs Smartflash LLC and Smartflash Technologies Limited
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`(collectively “Smartflash”) filed two separate actions, one against Defendants Apple, Inc., Robot
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`Entertainment, Inc., KingIsle Entertainment, Inc., and Game Circus LLC (6:13-cv-447), and one
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`against Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
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`Telecommunications America, LLC, HTC Corporation, HTC America, Inc., Exedea, Inc. and
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`Game Circus LLC (6:13-cv-448). Smartflash alleges Defendants infringe the following patents:
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`U.S. Patent No. 7,334,720; U.S. Patent No. 7,942,317; U.S. Patent No. 8,033,458; U.S. Patent
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`No. 8,061,598; U.S. Patent No. 8,118,221; and U.S. Patent No. 8,336,772. All patents are titled
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`“Data Storage and Access Systems.” The patents-in-suit all stem from a common specification
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`and share a common written description and figures. In the interest of simplicity, the ’720 Patent
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`is cited unless otherwise specified.
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`Claim Construction
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the
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`patented invention’s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad Commc’ns
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`Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the
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`rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl.
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 3 of 42 PageID #: 6424
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`Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary
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`meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips,
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`415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`
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`Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at
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`1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
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`Other claims, asserted and unasserted, can provide additional instruction because “terms are
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`normally used consistently throughout the patent.” Id. Differences among claims, such as
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`additional limitations in dependent claims, can provide further guidance. Id.
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`
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`terms, give a claim term a different meaning that it would otherwise possess, or disclaim or
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`disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes
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`terms possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
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`1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir.
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`2004).
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 4 of 42 PageID #: 6425
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example,
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`“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is
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`rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d
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`1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the
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`specification may aid the court in interpreting the meaning of disputed language in the claims,
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`particular embodiments and examples appearing in the specification will not generally be read
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`into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent. Home
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`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent”). The well-
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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
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`prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
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`2002); see also Springs Window, 323 F.3d at 994 (“The disclaimer . . . must be effected with
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`‘reasonable clarity and deliberateness.’”) (citations omitted)). “Indeed, by distinguishing the
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`claimed invention over the prior art, an applicant is indicating what the claims do not cover.”
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`Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1988) (quotation omitted).
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`“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 5 of 42 PageID #: 6426
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`function of the intrinsic evidence and protects the public’s reliance on definitive statements made
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`during prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.
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`Although, “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`The patent in suit may contain means-plus-function limitations that require construction.
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`Where a claim limitation is expressed in means-plus-function language and does not recite
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`definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6.
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`Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, § 112
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`mandates that “such a claim limitation be construed to cover the corresponding structure . . .
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`described in the specification and equivalents thereof.” Id. (citing 35 U.S.C. § 112 ¶ 6.).
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`Accordingly, when faced with means-plus-function limitations, courts “must turn to the written
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`description of the patent to find the structure that corresponds to the means recited in the
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`[limitations].” Id.
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`
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`Construing a means-plus-function limitation involves two inquiries. The first step
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`requires “a determination of the function of the means-plus-function limitation.” Medtronic, Inc.
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 6 of 42 PageID #: 6427
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`v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has
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`determined the limitation’s function, “the next step is to determine the corresponding structure
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`disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311. A structure
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`is corresponding “only if the specification or prosecution history clearly links or associates that
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`structure to the function recited in the claim.” Id. Moreover, the focus of the corresponding
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`structure inquiry is not merely whether a structure is capable of performing the recited function,
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`but rather whether the corresponding structure is “clearly linked or associated with the [recited]
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`function.” Id.
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`Summary Judgment
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`“Summary judgment is appropriate in a patent case, as in other cases, when there is no
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`genuine issue as to any material fact and the moving party is entitled to judgment as a matter of
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`law.” Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); FED. R. CIV.
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`P. 56(c). The moving party bears the initial burden of “informing the district court of the basis
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`for its motion” and identifying the matter that “it believes demonstrate[s] the absence of a
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`genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving
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`party meets this burden, the nonmoving party must then set forth “specific facts showing that
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`there is a genuine issue for trial.” FED. R. CIV. P. 56(c), see also T.W. Elec. Serv., Inc. v. Pacific
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`Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
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`
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`A party seeking to invalidate a patent must overcome a presumption that the patent is
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`valid. See 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243 (2011);
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`United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). This
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`presumption places the burden on the challenging party to prove the patent’s invalidity by clear
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`and convincing evidence. Microsoft, 131 S. Ct. at 2243; United States Gypsum Co., 74 F.3d at
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 7 of 42 PageID #: 6428
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`1212. Close questions of indefiniteness “are properly resolved in favor of the patentee.”
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`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005); Exxon
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`Research & Eng’g Co. v. United States, 265 F.3d 1371, 1380 (Fed. Cir. 2001).
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`
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`Claims must particularly point out and distinctly claim the invention. “The specification
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`shall conclude with one or more claims particularly pointing out and distinctly claiming the
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`subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. The primary
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`purpose of the requirement of definiteness is to provide notice to those skilled in the art of what
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`will constitute infringement. See United Carbon Co. v. Binney Co., 317 U.S. 228, 236 (1942).
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`The definiteness standard is one of reasonableness under the circumstances, requiring that, in
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`light of the teachings of the prior art and the invention at issue, the claims apprise those skilled in
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`the art of the scope of the invention with a reasonable degree of precision and particularity. See
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`Shatterproof Glass Corp. v. LibbeyOwens Corp., 758 F.2d 613, 624 (Fed. Cir. 1985). To rule “on
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`a claim of patent indefiniteness, a court must determine whether one skilled in the art would
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`understand what is claimed when the claim is read in light of the specification.” Bancorp. Servs.,
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`L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). “A determination of
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`indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
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`construer of patent claims, [and] therefore, like claim construction, is a question of law.” Amtel
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`Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999).
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`I. Claim Construction
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`A. Agreed Terms
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`The parties have agreed to the construction of one term. Doc. No. 180 at 6.
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`Claim Terms
`Supplementary data
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`Agreed Claim Construction
`reward
`Advertising
`data,
`customer
`management data, and/or hot links to web sites
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 8 of 42 PageID #: 6429
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`In view of the parties’ agreements on the proper construction of this term, the Court
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`ADOPTS AND APPROVES this construction.
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`B. Disputed Terms
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`1. “payment data”
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`Smartflash’s Proposed Construction
`“Data that can be used to make payment for
`content”
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`Defendants’ Proposed Construction
`“data, distinct from access control data and
`user identity data, representing either actual
`payment made or record of payment made for
`requested content data”
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`
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`The parties dispute two key issues: (1) whether “payment data” makes payments or
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`represents payments; and (2) whether “payment data” is distinct from other forms of data.
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`Smartflash proposes that “payment data” is merely any data that can be used to pay for
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`content. Smartflash argues that the patents-in-suit make it clear that the purpose of “payment
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`data” is to make payments, not to represent a payment that has been made. Opening Brief at 5.
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`Smartflash relies on Figure 12c, which diagrams a process beginning with “payment data for
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`making a payment.” Id. at 5 (citing ’720 21:15–21:16). Smartflash argues that Defendants’
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`construction is inappropriate because it would make certain claims nonsensical. Id. For example,
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`Claim 30 of the ’772 patent requires a device to transmit payment data for an item in response to
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`a user selection for the item. ’772 at 31:19–26. According to Smartflash, Defendants’
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`construction would mean this claim requires a user to pay for an item before even selecting it.
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`Opening Brief at 5. Smartflash also contends that “access control data” or “user identity data”
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`may act as payment data if either is used to pay for content. Id. at 6.
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`Defendants contend that “payment data” can only be one of two things: (1) data
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`representing an actual payment; or (2) data recording such payment. Apple Resp. at 2–3. In
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`support, Defendants point to specification language stating, “payment data received may either
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`be data relating to an actual payment made to the data supplier or it may be a record of a
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`payment made . . . .” Id.. at 2 (citing ’720 Patent at 6:58–63). Defendants argue that their
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`proposal is not nonsensical because it is not limited to prior payments. Id. at 3. According to
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`Defendants, their construction only requires that “payment data” reflect actual payment, whether
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`past or present. Id. Thus the claim language would not be nonsensical because payment would
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`only be made after a user selects the content. Id. Additionally Defendants argue that “[t]he
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`specification consistently describes ‘payment data’ as being distinct from access control data and
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`user identity data.” Samsung Resp. at 3–4 (citing ’720 Patent at 4:31–33 & 17:62–18:5).
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`According to Defendants, “access control data” and “user identity data” are independent of
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`“payment data” and thus, may be used to access payment data, which is the only type of data the
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`patents ever describe as being “used to pay for content.” Samsung Resp. at 4–5 (citing ’720
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`Patent at 5:30–33 & 14:57–61).
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`The specification discloses using payment data to “make a payment” through an e-
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`payment system or through the “system owner’s data supply computer.” ’720 Patent at 20:8–10
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`& 21:15–26 (“[P]ayment data for making a payment to the system owner is received . . . and
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`forwarded to an e-payment system . . . . Payment record data, validating payment by the card to
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`the system owner, is then received back from the e-payment system . . . .”). This disclosure
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`shows that “payment data” can do more than just represent payments as Defendants contend.
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`Defendants’ proposal also seeks to import a negative limitation into the construction of
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`“payment data” that would exclude “user identity data” and “access control data.” As Defendants
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`note, the Summary of the Invention discusses “payment data” and “identification data” in
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`relation to one another. ’720 Patent at 4:31–33 (“The payment data will normally be linked to a
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`card or card holder identification data for payment by the card holder.”). Statements that describe
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 10 of 42 PageID #: 6431
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`the invention as a whole, rather than preferred embodiments, are more likely to support a
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`limiting definition of a claim term. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864
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`(Fed. Cir. 2004). This type of statement is more likely to be found in certain sections of the
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`specification, such as the Summary of the Invention. Id.
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`Turning to the claims of the patent, Claim 30 of the ’772 patent is representative and
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`states:
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`30. A data access terminal for controlling access to one or more content data
`items stored on a data carrier, the data access terminal comprising:
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`a user interface;
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`a data carrier interface;
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`a program store storing code implementable by a processor; and
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`a processor coupled to the user interface, to the data carrier interface and
`to the program store for implementing the stored code, the code comprising:
`. . .
`code responsive to said first user selection of said selected at least
`one content data item to transmit payment data relating to
`payment for said selected at least one content item for
`validation by a payment validation system;
`code to receive payment validation data defining if said payment
`validation system has validated payment for said selected at
`least one content data item;
`. . . .
`
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`’772 Patent at 30:65–31:7 & 31:22–29 (emphasis added). Claim 30 does not refer to user
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`identification data, nor does it preclude “payment data” from being user identification data.
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`In support of their argument, Defendants cite to Claim 12 of the ’598 Patent, which does
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`recite both “payment data” and “identification data”:
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`12. a portable data carrier as claimed in claim 10, wherein the code to provide
`payment to the payment validation system comprises code to provide the payment
`data and/or identification data to the network operator.
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`The recitation of both “payment data” and “identification data” in the same claim
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`
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`suggests that these terms do refer to different, distinct data. See Becton, Dickinson & Co. v. Tyco
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`Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements
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`10
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 11 of 42 PageID #: 6432
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`separately, the clear implication of the claim language is that those elements are distinct
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`components of the patented invention.”) (citations and internal quotation marks omitted).
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`However, Claim 12 of the ’598 Patent also suggests that identification data itself may be used for
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`payment. This reading is consistent with the claims from which Claim 12 depends, such as Claim
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`8. Claim 8 recites:
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`8. A portable data carrier as claimed in Claim 7, wherein code to provide payment
`to the payment validation system comprises code to provide the identification data
`identifying the user of the portable data carrier to the payment validation system.”
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`’598 Patent at 26:29–33.
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`
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`Given this claim language, Defendants’ proposed negative limitation is not warranted.
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`Similarly, Defendants’ proposal that “payment data” can only represent “actual payment made or
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`record of payment made” is too narrow. The specification and cited claim language uses
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`payment data broadly to refer to whatever data is being used “for making a payment.” ’720
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`Patent at 21:15; ’598 Patent at Cl. 8. Accordingly, “payment data” is construed to mean “data
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`that can be used to make a payment for content.”
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`2. “payment validation system”
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`Defendants’ Proposed Construction
`“system to validate payment data and authorize
`payment”
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`Smartflash’s Proposed Construction
`No construction necessary
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`Alternatively:
`“system that returns payment validation data in
`response to valid payment data”
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`
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`The parties agree that the “payment validation system” is a system that validates payment
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`data. The parties dispute whether “payment validation system” should have the additional
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`limitation that it authorizes payment.
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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 12 of 42 PageID #: 6433
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`Smartflash argues that the claim language is clear and that no construction is necessary.
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`Opening Brief at 7. Smartflash contends that Defendants’ proposal would exclude certain
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`embodiments. Id. at 7–8. According to Smartflash, Defendants’ construction relies on certain
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`embodiments in the specification where a user device transfers payment data to a data supplier
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`that relies on a third party payment authority to process and authorize the payment. Id. at 8
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`(citing ’720 Patent at 11:66–12:4). Smartflash argues that other portions of the specification
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`directly contradict this construction because “payment validation system” is also used to refer to
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`a system that validates payment data without performing the additional functions of a banking
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`process system. Id. (citing ’720 Patent at 13:53–13:62).
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`Defendants contend that the specification teaches that the “payment validation data” both
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`validates and authorizes payment. Apple Resp. at 5 (citing ’720 Patent at 8:21–23). Defendants
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`argue that this is the only portion of the specification that describes the role of the “payment
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`validation system.” Id. According to Defendants, their construction only requires that the
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`payment validation system be capable of validating payment data and authorizing payment in
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`response to receipt of payment data, thus infringement is not tied to a particular use as
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`Smartflash contends. Id. at 6–7 (citing Nazomi Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339,
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`1344 (Fed. Cir. 2014)). Defendants argue that this is consistent with the inventors’ stated goal of
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`reducing data piracy by “binding the data access and payment together.” Samsung Resp. at 5
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`(citing ’720 Patent at 1:66–2:3).
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`The Summary of the Invention states:
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`The combination of the payment validation means with the data storage means
`allows the access to the downloaded data[,] which is to be stored by the data
`storage means, to be made conditional upon checked and validated payment being
`made for the data. Binding the data access and payment together allows the
`legitimate owners of the data to make the data available themselves over the
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`internet without fear of loss of revenue, thus undermining the position of data
`pirates.
`
` . . .
`
`The terminal reads payment data from the data carrier and transmits this to a
`payment validation system for validating the data and authorizing payment. This
`may be part of the data supplier’s computer system or it may be a separate system
`such as an e-payment system.
`
` .
`
` . .
`
`
`The payment validation system may be part of the data supplier’s computer
`systems or it may be a separate e-payment system. In one embodiment the method
`further comprises receiving payment validation data from the payment validation
`system; and transmitting at least a portion of the payment validation data to the
`data supplier.
`
`’720 Patent at 1:62–2:3, 8:21–25 & 8:64–9:2 (emphasis added).
`
`
`
`Smartflash is correct that “[t]he fact that a patent asserts that an invention achieves
`
`several objectives does not require that each of the claims be construed as limited to structures
`
`that are capable of achieving all of the objectives.” See Liebel-Flarsheim Co. v. Medrad, Inc.,
`
`358 F.3d 898, 908 (Fed. Cir. 2004). Indeed, the specification also discloses e-payment systems
`
`where payment authentication is performed at a later stage. See ’720 Patent at 23:22-33
`
`(“[p]ayment may be made directly to the system owner, and either concurrently with the content
`
`access and download process, or at some later stage . . . .”) (emphasis added). In such a system,
`
`the content supplier could “validate” the payment by allowing a purchase on credit, with actual
`
`payment to occur at a later time. Thus, the specification is not as clear as Defendants have
`
`argued. Indeed the specification disclosure of “validating the data and authorizing the payment”
`
`suggests that “authorizing” is distinct from “validating.” See ’720 Patent at 8:21–25.
`
`However, Smartflash’s proposed construction is not complete. The payment validation
`
`system is not limited to returning data in response to only valid payment data. The system must
`
`
`
`13
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`Page 00013
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`

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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 14 of 42 PageID #: 6435
`
`return whatever data results from an attempt to validate payment data. See ’772 Patent at Claim
`
`30 (“code to receive payment validation data defining if said payment validation system has
`
`validated payment for said selected at least one content data item”). The purpose of a validation
`
`system would be moot if it only worked when valid payment data was sent. Accordingly,
`
`“payment validation system” is construed to mean “system that returns payment validation
`
`data based on an attempt to validate payment data.”
`
`3. “payment validation data”
`
`Smartflash’s Proposed Construction
`No construction necessary
`
`Alternatively:
`“data indicating that payment data is valid”
`
`Defendants’ Proposed Construction
`“data received from payment validation system
`representing that payment was authorized for
`requested content data”
`
`
`
`The dispute for this term is similar to the previous dispute for “payment validation
`
`system.” Smartflash argues that “payment validation data” is data returned from a payment
`
`validation system indicating that payment data is valid. Opening Brief at 11. Smartflash contends
`
`that “payment validation data” is not required to authorize payment as Defendants’ construction
`
`would require. Id. According to Smartflash, Defendants’ construction is inconsistent with the
`
`plain language of the term, which refers to validation data, not authorization data. Id. at 12.
`
`
`
`Defendants’ construction requires that the “payment validation data” represent that
`
`payment data was both validated and authorized. Defendants rely on the same arguments
`
`discussed previously for “payment validation system.” See Apple Resp. at 5–7; Samsung Resp.
`
`at 5–8. Thus, if the “payment validation system” must authorize the payment data, then the
`
`“payment validation data” must represent that authorization.
`
`
`
`As previously discussed, the parties’ constructions for this term are too narrow. See ’772
`
`Patent Claim 30 (“code to receive payment validation data defining if said payment validation
`
`
`
`14
`
`Page 00014
`
`

`
`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 15 of 42 PageID #: 6436
`
`system has validated payment for said selected at least one content data item.”). Thus, “payment
`
`validation data” is merely data received from a payment validation system and relates to whether
`
`a payment has been validated. Such a construction would add little clarity to the plain language
`
`of the term. Accordingly, “payment validation system” is construed to have its plain meaning.
`
`4. “content data memory” / “non-volatile data memory” / “memory . . . for storing
`
`data” / “memory configured to store . . . content” / “parameter memory” / “use rule
`
`memory”
`
`Smartflash’s Proposed Construction
`No construction necessary
`
`terms do not
`These
`separate” memories
`
`require “physically
`
`Defendants’ Proposed Construction
`Each of (1) “content data memory,” “data
`memory,” “memory . . . for storing data,” and
`“memory configured to store . . . content” is
`physically
`separate
`from
`each of
`(2)
`“parameter memory” and “use rule memory”
`
`
`
`These terms all deal with types of memory for storing content. Smartflash contends that
`
`these “memory” terms do not need to be construed because the plain and ordinary meaning is
`
`sufficient. Opening Brief at 12. According to Smartflash, “the mere fact that some claims use
`
`two different phrases to identify required memory does not imply that those claims require
`
`‘physically’ separate memories” because a single component may satisfy multiple elements of a
`
`claim. Id. at 13 (citing Cannon Rubber Ltd. v. First Years, Inc., No. 05-1063, 163 F. App’x 870,
`
`877 (Fed. Cir. Dec. 28, 2005) & Intellectual Property Development, Inc. v. UAColumbia
`
`Cablevision, 336 F.3d 1308, 1320 n.9 (Fed. Cir. 2003)). Smartflash argues that many of the
`
`asserted claims recite memory used to store different things, but that none of the claims require
`
`the memories be “physically separate.” Id. at 12–13. Smartflash contends that Defendants’
`
`argument is flawed because the claims in the ’772 Patent require “non-volatile memory
`
`configured to store multimedia content,” but do not require any “parameter memory” or “use rule
`
`
`
`15
`
`Page 00015
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`

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`Case 6:13-cv-00447-KNM Document 229 Filed 09/24/14 Page 16 of 42 PageID #: 6437
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`memory.” Id. at 13. Thus, according to Smartflash, Defendants’ construction would require that
`
`“parameter memory” and “use rule memory” be physically separate from the claimed memory,
`
`even though “parameter memory” and “use rule memory” are not actually required by the
`
`claims. Id.
`
`
`
`Defendants respond that the use of the conjunction “and” in a claim indicates that an
`
`inventor intended to claim distinct, separate components. Apple Resp. at 16 (citing TIP Sys., LLC
`
`v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1375–76 (Fed. Cir. 2008) & Gaus v. Conair
`
`Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). Defendants also rely on the prosecution history for
`
`the ’720 Patent. Defendants point to a response to a 2007 office action, where the applicants
`
`amended their claims to include “parameter memory” separate from the “content memory” as
`
`well as a requirement that “use rules” and “use status data” be read “from the parameter
`
`memory.” Apple Resp. at 18. Defendants argue that these amendments require separate memory,
`
`stored on separate chips, because the prior art Hiroya “disclosed that the ticket information and
`
`the electronic signature would be stored separately on the same chip.” Id. at 19. According to
`
`Defendants,