Case 6:11wcv~00656~LED Document 178
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`Filed 08/05/13 Page 1 of 48 PagelD #: 5835
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CASE NO. 6:II~CV-655
`PATENT CASE
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`§
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`§ §
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`§ §
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`§
`§
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`§ §
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`§
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`NEC CORPORATION OF AMERICA, INC.
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`Defendant.
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`PERSONALWEB TECHNOLGIES, LLC
`
`Plaintiff,
`
`vs.
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`GOOGLE INC. AND YOUTUBE, LLC
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`Defendants.
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`PERSONALWEB TECHNOLGIES, LLC
`
`Plaintiff,
`
`VS.
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`NETAPP, INC.
`
`Defendant.
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`
`
`wounwccmcmomcmomcmomWWWWDWWWWWW
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`
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`CASE NO. 6:11—CV—656
`PATENT CASE
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`CASE NO. 6:11—CV-657
`PATENT CASE
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`
`
`
`
` EXHIBIT ‘
`
`
`gamnwd
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`201.5
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`tabbies”
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`

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`Case 6:11—cv-00656—LED Document 178
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`Filed 08/05/13 Page 2 of 48 PagelD #: 5836
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`
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`Defendants.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
`
`vs.
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`AMAZON.COM, INC.; AMAZON WEB
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`SERVICES LLC; AND DROPBOX, INC.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`EMC CORPORATION, AND
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`VMWARE, INC.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`AUTONOMY, INC., ET AL,
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`
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`
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`WWWWWCMWDWWWWDCMWWWWWJWWWJWWWGOOWJWDWJWOWW
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`CASE NO. 6:11—CV~658
`PATENT CASE
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`CASE NO. 6:11-CV-660
`PATENT CASE
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`CASE NO. 6:11-CV—683
`PATENT CASE
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`Defendants.
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`Defendants.
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`

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`Case 6:11—Cv—00656-LED Document 178
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`Filed 08/05/13 Page 3 of 48 PagelD #: 5837
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`
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`Defendant.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
`
`vs.
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`YAHOO! INC.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
`
`vs.
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`APPLE INC.
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`PERSONALWEB TECHNOLGIES, LLC
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`Plaintiff,
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`VS.
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`FACEBOOK, INC.
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`
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`WWWWWWCMWJWOUDWWWWDWWWUOOCMWWWWWDWWWWWDW
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`CASE NO. 6:12—CV—658
`PATENT CASE
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`CASE NO. 6:12—CV—660
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`PATENT CASE
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`CASE NO. 6:12-CV—662
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`PATENT CASE
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`Defendant.
`
`
`Defendant.
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`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion construes the disputed claim terms in US. Patent Nos.
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`5,978,791 (“the “791 Patent), 6,415,280 (“the ‘280 Patent), 6,928,442 (“the ‘442 Patent),
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`7,802,310 (“the “310 Patent), 7,945,539 (“the “539 Patent), 7,945,544 (“the ‘544 Patent),
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`7,949,662 (“the ‘662 Patent), 8,001,096 (“the ‘096 Patent), and 8,099,420 (“the ‘420 Patent).
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`

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`Case 6:11—cv—00656-LED Document 178
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`Filed 08/05/13 Page 4 of 48 PageID #: 5838
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`Autonomy and Hewlett-Packard’s Motion for Summary Judgment of Indefiniteness (6:11—CV—
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`683, Docket No. 164) is DENIED. Facebook’s Motion for Summary Judgment of Indefiniteness
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`(6: 12—CV—662, Docket No. 66) is DENIED.
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`BACKGROUND
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`The Plaintiff PersonalWeb Technologies LLC (“PersonalWeb”) sued the following
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`Defendants for infringement: NEC Corporation of America, Inc. (“NBC”); Google, Inc. and
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`YouTube, LLC (“Google”); NetApp, Inc. (“NetApp”); Amazon.com, Inc. and Amazon Web
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`Services LLC (“Amazon”); Dropbox,
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`Inc.
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`(“Dropbox”); EMC Corp. and VMWare,
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`Inc.
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`(“EMC”); Autonomy, Inc., HewlettaPackard Co., and HP Enterprise Services, LLC (“HP”);
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`Yahoo! Inc. (“Yahoo”); Apple Inc. (“Apple”); and Facebook, Inc. (“Facebook”). The Court
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`heard oral argument on July 18, 2013.
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`There are nine asserted patents, all claiming priority to a common application. A number
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`of the Patents have been the subject of post—issuance examination. Inter Partes Reviews (“IPRs”)
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`have been initiated for several of the Patents, and the Patent Trial and Appeal Board (“PTAB”)
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`has issued decisions for at
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`least three Patents. The Patents generally relate to methods for
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`identifying data items in a data processing system.
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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) (en banc) (quoting lnnova/Pure Water Inc. v. Safari Water Filtration Syn,
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`Inc, 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
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`intrinsic evidence to define the patented invention’s scope. See id; CR. Bard,
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`Inc. v. US.
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`Surgical Corp, 388 F.3d 858, 861 (Fed. Cir. 2004); Bell All. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc, 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`1314; C. R. Bard, Inc, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`context of the entire patent. Phillips, 415 F.3d at 1312—13; Alloc, Inc. v. 11117 Trade Comm ’n,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314—»15.
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`“[C]1aims ‘must be read in view of the specification, of which they are a part.” Id.
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`(quoting Markman v. West‘view Inslruments, Inc, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he 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 Viironics
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`Corp. v. Conceplronic, Inc, 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Teleflex, Inc. v.
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`Ficosa N. Am. Corp, 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may
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`define his own terms, give a claim term a different meaning than the term would otherwise
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`possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
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`the inventor’s lexicography governs. Id. Also, the specification may resolve ambiguous claim
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`terms “where the ordinary and accustomed meaning of the words used in the claims lack
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`sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
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`Teleflex, Inc, 299 F.3d at 1325. But, “[allthough the specification may aid the court
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`in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.” Comark Commc’ns,
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`Inc. v. Harris Corp, 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
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`Micro—Devices, Inc, 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool
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`to supply the proper context for claim construction
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`because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
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`Inc, v. Lifescan, Inc, 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification,
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`a patent applicant may define a term in prosecuting a patent”).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
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`(quoting CR. Bard, Inc, 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. 1d. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court.
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`Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” 1d.
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`The patents—in—suit also 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(f). B.
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`Braun Med, Inc. v. Abbott Labs, 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, 35
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`U.S.C. § 112(f) “mandates that such a claim limitation ‘be construed to cover the corresponding
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`structure. .
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`. described in the specification and equivalents thereof.” Id (quoting 35 U.S.C. §
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`112(1)). Accordingly, when faced with means—plus-function limitations, courts “must turn to the
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`written 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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`Construing a means—plus—function limitation involves multiple inquiries. “The first step in
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`construing [a means—plus—function] limitation is a determination of the function of the means—
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`plus—function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Syn, Inc, 248 F.3d 1303,
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`1311 (Fed. Cir. 2001). Once a court has determined the limitation’s function, “[t]he next step is
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`to determine the corresponding structure described in the specification and equivalents thereof.”
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`Id. A “structure disclosed in the specification is
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`‘corresponding’
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`structure only if the
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`specification or prosecution history clearly links or associates that structure to the function
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`recited in the claim.” Brawn, 124 F.3d at 1424.
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`Software—implemented means—plus-function limitations generally require more than the
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`disclosure of a general purpose computer as the supporting structure. Aristocrat Techs. Aasrl.
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`PTY Ltd.
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`v.
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`Int’l Game Tech, 521 F.3d 1328, 1333 (Fed. Cir. 2008). An algorithm for
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`performing the claimed function must be disclosed. WMS Gaming .Inc. v. Int ’1 Game Tech, 184
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`F.3d 1339, 1349 (Fed. Cir. 1999). The algorithm may be disclosed “in any understandable terms
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`including as a mathematical formula, in prose, or as a flow chart, or in any other manner that
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`provides sufficient structure.” Finisar Corp. v. DirecTV Group, Inc, 523 F.3d 1323, 1340 (Fed.
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`Cir. 2008) (internal citations omitted). However, as a narrow exception, disclosure of a general
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`purpose computer may be sufficient if the “function[ ] can be achieved by any general purpose
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`computer without special programming,” In re Katz Interactive Call Processing Patent
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`Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011).
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`Defendants also contend that some claims at issue are invalid for indefi‘niteness. A claim
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`is invalid under 35 U.S.C. § 11203) if it rails to particularly point out and distinctly claim the
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`subject matter that the applicant regards as the invention. The party seeking to invalidate a claim
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`under 35 U.S.C. § 112(b) as indefinite must show by clear and convincing evidence that one
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`skilled in the art would not understand the scope of the claim when read in light of the
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`specification. Intellectual Prop. Dev, Inc. v. (IA—Columbia Cablevision of Westclzesler, Inc, 336
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`F.3d 1308, 1319 (Fed. Cir. 2003).
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`ANALYSIS
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`“data item(s)”1
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`PersonalWeb proposes “sequence of bits.” Defendants propose “the contents of a file, a
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`portion of a file, a page in memory, an object in an object—oriented program, a digital message, a
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`digital scanned image, a part of a video or audio signal, or anyother similar entity which can be
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`represented by a sequence of bits.”
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`Both sides cite the following passage from the specification:
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`In general, the terms “data” and “data item” as used herein refer to sequences of
`bits. Thus a data item may be the contents of a file, a portion of the file, a page in
`memory, an object in an object—oriented program, a digital message, a digital
`scanned image, a part of a video or audio signal, or any other entity which can be
`represented by a sequence of bits.
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`I For all construed terms, the Court’s construction reflects use of the term in the claims cited in the parties’ Joint
`Claim Construction Statement. See 6:11-CV—655, Docket No. 85, Ex. B. Not every Defendant proposes a
`construction for every term. See id. For some terms, one or more Defendants propose no construction is necessary.
`Id. Further, many Defendants propose their own individual constructions for numerous terms. Id. For the majority of
`terms, the Court uses Defendants’ “exemplary construction” to explain its analysis. However,
`it considered all
`proposed constructions from every Defendant for every term in its analysis. To the extent any Defendants’ specific
`construction is not discussed in this order, it was still considered by the Court.
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`c791 Patent, at 1:54~60. PersonalWeb contends this passage indicates a “data item” is simply a
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`sequence of bits, so any further limitations would be improper. 6:11—CV—655, Docket No. 86
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`(“Brief”) at 15. PersonalWeb argues Defendants’ list of examples is non-exhaustive and would
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`confuse the jury.
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`Id. at 16. Additionally, PersonalWeb asserts that other portions of the
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`specification cite different examples of data items, such as directories and records in a database.
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`Id. Thus, Defendants” list of examples is incomplete because it does not even include every
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`example taught in the specification. Id. Finally, PersonalWeb challenges Defendants’ inclusion
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`of the word “similar,” which PersonalWeb asserts has no support from the specification. Id.
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`Defendants argue PersonalWeb makes contradictory arguments regarding the patentee’s
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`lexicography.
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`6:11—CV—655, Docket No.
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`89
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`(“Response”)
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`at 29. Defendants
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`contend
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`PersonalWeb cannot argue the patentee expressly defined “data item” as a sequence of bits, then
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`ignore the remainder of the patentee’s definition (which included the cited examples). Id.
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`Defendants also believe their list of examples highlights that a “data item” must be an item. Id. at
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`30. Defendants contend the word “item” indicates a “data item” must be a discrete object, not an
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`unbounded sequence of bits. Id.
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`The specification plainly and unambiguously states that a data item is a sequence of bits.
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`‘791 Patent, at 1:54—55; see Thomer v. Sony Computer Ent’m ’Z’Am. LLC, 669 F.3d 1362, 1365—
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`66 (Fed. Cir. 2012)
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`(noting a patentee may act as its own lexicographer). Any further
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`construction would be unnecessary. Defendants include several illustrative examples in their
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`proposed construction, but
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`the specification makes clear that
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`those examples are merely
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`permissive. See ‘791 Patent, at 1:55 (“Thus a data item may be....”) (emphasis added). Further,
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`the specification includes other examples of data items that are not included in Defendants’
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`proposal. For example, data items can be “files, directories, records in the database, objects in
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`object-oriented programming, locations in memory or on a physical device, or the like.” See id.
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`at 1:66—2z2.
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`It would be misleading to include a non-exhaustive list of examples in the
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`construction when the specification teaches further examples as well. See Dealerlrack, Inc. v.
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`Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012) (declining to limit a term to a list of examples in
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`the specification).
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`A “data item” is a “sequence of bits.”
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`“data file(s)”
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`PersonalWeb proposes “a named data item having one or more data segments.”
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`Defendants propose “a named data item that appears in a directory in a file system and which is a
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`data file.”
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`The specification contains the following passage:
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`A file system is a collection of directories. A directory is a collection of named
`filesw—both data files and other directory files. A file is a named data item which
`is either a data file (which may be simple or compound) or a directory file. A
`simple file consists of a single data segment. A compound file consists of a
`sequence of data segments. A data segment is a fixed sequence of bytes.
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`‘791 Patent, at 5:44—«52. Each side contends this passage supports its construction. PersonalWeb
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`argues its definition comes directly from the specification because “a file is a named data item.”
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`Brief at 17. A data file can be either simple or compound, and its construction reflects that. Id.
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`PersonalWeb further challenges Defendants’ inclusion of “appears in a directory file system.” Id.
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`at 17. PersonalWeb asserts that there is no requirement that all data files be located in directories.
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`Id.
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`Defendants argue the portion of the specification relied upon by PersonalWeb cannot be
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`read independently of the two preceding sentences. Response at 31. Defendants contend the
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`paragraph as a whole indicates a “data file” is part of a collection of named files that are part of a
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`collection of directories. Id. Defendants assert that this construction makes sense in light of the
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`content-based approach of file identification described in the Patents.
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`Id. Defendants also
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`contend their seemingly redundant “and which is a data file” limitation is appropriate. Id.
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`Defendants argue the specification distinguishes between a “data item” and a “file,” but
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`PersonalWeb’s construction blurs that distinction.
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`Id.
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`at 32. Defendants believe under
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`PersonalWeb’s construction, a mere segment of data could be a “file.” Id.
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`The specification teaches that a data file may be simple or compound. ‘791 Patent, at
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`5:48~—49. “A simple file consists of a single data segment. A compound file consists of a
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`sequence of data segments.” Id. at 5:49—51. This passage indicates why PersonalWeb’s “having
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`one or more data segments” limitation is unnecessary. A file can have one segment or multiple
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`segments, so there is no reason to include a limitation about the number of segments. The
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`limitation does not change the claim scope.
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`There is no support for Defendants” inclusion of “that appears in a directory in a file
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`system.” The specification states that a directory includes both data files and other directory files.
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`Id. at 5:46—47. Defendants use this statement to argue a data file must be located in a directory.
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`This is incorrect. A directory must contain data files, but there is no requirement that all data
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`files be located in a directory.2 See id. at 5:45-«52. Instead, a data file may be located elsewhere.
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`Further, there are no disclaimers limiting the location of a data file to a directory, and the
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`remainder of the paragraph supports this construction.
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`Defendants also argue the Court’s construction should include the directory limitation
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`because PersonalWeb proposed a similar construction during an IPR. See Response at 30.
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`2 For example, if A contains B and C, B is not required to be found within A. There is nothing preventing B from
`being located in D or E.
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`However, the PTAB did not adopt the directory limitation, and Defendants cite no authority that
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`this Court should adopt a construction rejected by the PTAB. See Docket No. 89, Ex. G. at ll.
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`“Data file(s)” is “a named data item(s).”
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`“file system”
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`PersonalWeb contends no construction is necessary.
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`In the alternative. PersonalWeb
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`proposes “A collection of directories. A directory is a collection of named files.” Defendants
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`propose “a collection of directories, which each include a collection of named files.”
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`PersonalWeb contends the phrase requires no construction because it
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`is
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`readily
`
`understood. Brief at 18. In the alternative, PersonalWeb proposes a construction taken verbatim
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`from the specification. See ‘791 Patent, at 5244—49. PersonalWeb believes Defendants’
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`construction is improper because it contains the word “includes.” Brief at 19. PersonalWeb
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`argues Defendants” construction would make “directory” and “collection of named files” two
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`different things, even though a directory is a collection of named files. Id. Defendants describe
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`this as a mischaracterization of their construction. Response at 33. Defendants believe a directory
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`contains only named files, and that the parties” constructions are very similar. Id.
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`“File system” is readily understood without construction. The specification states that “a
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`file system is a collection of directories. A directory is a collection of named files.” ‘791 Patent,
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`at 514546. This is the commonly understood meaning of the term, and a jury will be able to
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`understand the term without construction. Defendants contend their construction tracks the
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`language of the specification, but
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`they fail
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`to justify their inclusion of “each” in their
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`construction. “Each” does not appear in the specification, and it would only add ambiguity to the
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`term. See id. at 5:45—54.
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`“File system” requires no construction.
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`“substantially unique identifier,” “data identifier,” and “True Name”3
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`PersonalWeb proposes “an identity for a data item generated by processing all of the data
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`in the data item, and only the data in the data item, through an algorithm.” Defendants propose
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`“an identifier for access to a data item generated by processing all of the data in the data item,
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`and only the data in the data item, through at. algorithm that makes it substantially unique to that
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`data.”
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`There are two substantive differences between the parties’
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`constructions. First,
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`Defendants include the phrase “for access to.” Defendants contend accessing a data item is the
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`key function of a substantially unique identifier. Response at 6. They assert that the Patents do
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`not teach any embodiment allowing access to a data item without using a substantially unique
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`identifier. Id. at 7. Further, Defendants cite a portion of the specification stating “the present
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`invention” is used to “reference and access” data items.
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`‘791 Patent, at 621748. Thus,
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`Defendants believe the construction should include “access.” Response at 8. PersonalWeb
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`counters that “access” is improper because “nothing in the specification limits the use of the
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`identifier once it is generated.” Brief at 6. Instead, PersonalWeb contends a substantially unique
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`identifier can be used for other purposes, such as determining whether a data item exists at a
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`specific location. Id.
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`The second difference between the constructions is Defendants’ inclusion of “through an
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`algorithm that makes it substantially unique to that data.” PersonalWeb contends there is no need
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`for language “purporting to state how “unique” the identifier must be.” Brief at 6. PersonalWeb
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`argues a substantially unique identifier is defined by how it is calculated, not by its level of
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`3 The parties agreed in their briefing the Court should construe “data identifier” the same way it construes
`“substantially unique identifier.” See Brief at ll—l2; Response at 9. At the hearing, the parties also stipulated that
`the Court should construe “True Name” the same way it construes the other two terms.
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`uniqueness. Id. In support, PersonalWeb cites a passage teaching that two different data items
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`can have the same identifier value. See ‘791 Patent, at 13:27~34.
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`Defendants argue the issue of how unique an identifier must be is an issue of law the
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`Court must decide during claim construction.4 Response at 8. Defendants contend their
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`construction accurately reflects that an algorithm cannot be “simply any algorithm.” Id, Instead,
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`the algorithm must generate an identifier that is substantially unique for each data item. 1d.
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`Further, Defendants cite an embodiment
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`teaching that a substantially unique identifier is
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`“virtually guaranteed” to represent a specific data block. “791 Patent, at 12:54—59. Accordingly,
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`Defendants believe the construction of “substantially unique identifier” must
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`include some
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`measure of uniqueness. Response at 9.
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`It would be inappropriate to include Defendants’ “for access to” language in the
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`construction because the specification teaches embodiments where a substantially unique
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`identifier is used for things other than access. For example, a substantially unique identifier can
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`be used to determine whether two files are identical. See ‘79] Patent, at 15:25—29. Substantially
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`unique identifiers can also locate, move, delete, or copy files. See id. at 39:1—6. Defendants do
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`not cite any disavowal that would mandate one particular use of a substantially unique identifier
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`over another. Given the number of different uses disclosed in the specification,
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`it would be
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`improper to include “for access to” in the construction.
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`The claim language also supports this construction; different claims teach different uses
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`of substantially unique identifiers. Claim 35 recites a method “for determining whether a
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`particular data item is present in a data processing system.” “791 Patent, Claim 35, at 43:42—43.
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`4 Defendants seemed to retreat from this position during the hearing, stating they believed the exact level of
`“substantial uniqueness” required by the Claims was a factual issue for the jury. However, Defendants still believe
`the construction should include the phrase “through an algorithm that makes it substantially unique to that data.”
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`The Claim teaches determining a substantially unique identifier, then determining whether that
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`identifier is included within a set of data items. Id. at 43:47—54. This is a locate function—the
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`Claim uses a substantially unique identifier to locate a file. On the contrary, Claim 30
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`specifically relates to access. Claim 30 uses a substantially unique identifier to “access[] a data
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`item in the system.” ‘79]. Patent, Claim 30, at 42:66~67. If a substantially unique identifier was
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`necessarily required to access a data item, this claim language would be superfluous, See Versa
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`Corp. v. Ag—Bag Int’l Ltd, 392 F.3d 1325, 1330 (Fed. Cir. 2004) (“The difference in meaning
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`and scope between claims is presumed to be significant to the extent that the absence of such
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`difference in meaning and scope would make a claim superfluous”) (internal quotations
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`omitted).
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`Claim 4 is also illustrative. Claim 4 depends from Claim 2, which depends from Claim 1.
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`Claim 4 contains the limitation “access means for accessing a particular data item using the
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`identifier of the data item.” “791 Patent, Claim 4, at 39340241. Neither Claim 1 nor Claim 2
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`contain any limitation about “accessing,” indicating a substantially unique identifier is not
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`required to access a data item. See Curliss—Wright Flow Control Corp. v. Velan, Inc, 438 F.3d
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`1374, 1380 (Fed. Cir. 2006).
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`The proper construction must also include a reference to substantial uniqueness.
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`PersonalWeb seems to be advocating a construction that requires no “uniqueness” at all.
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`However,
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`the
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`claim language
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`specifically
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`recites
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`“substantially
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`unique”
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`identifier.
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`PersonalWeb’s construction would essentially read these two words out of the construction.
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`Therefore, the construction must include a reference to substantial uniqueness.
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`No further construction of “substantially unique” is required. During the hearing, the
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`Court inquired whether it needed to separately construe “substantially unique.” Both sides said
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`no. Both sides agreed the level of uniqueness is a function of the data size, so whether a
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`particular identifier is substantially unique is a factual issue to be resolved by the jury.5 This
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`position is supported by the specification, which discusses uniqueness as a function of data size.
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`See ‘791 Patent, at l3:20~—45 (discussing “collisions” between data items).
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`“Substantially unique identifier,” “data identifier,” and “True Name” are “an identity for
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`a data item generated by processing all of the data in the data item, and only the data in the data
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`item, through an algorithm that makes the identifier substantially unique.”
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`“identifier”
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`PersonalWeb argues the term does not require construction. Defendants Apple, HP, and
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`NECAM argue the term does not require construction. EMC and VMware take no position on
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`the term. Google contends the term should be construed the same as “substantially unique
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`identifier.” NetApp and Amazon propose “a name or a substitute for a name for a data item for
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`use in a computer network.”
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`PersonalWeb contends the word “identifier” is readily understood to mean “something
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`that identifies” or “a value that identifies.” Brief at 3. PersonalWeb notes that several Defendants
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`have not asked the Court to construe this term, which illustrates that it can be readily understood
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`without further construction. Id. at 4. PersonalWeb further argues “identifier” should not be
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`given the same construction as “substantially unique identifier” because “identifier” is used
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`differently in the Claims. Id. PersonalWeb cites Claim 6 of the ‘310 Patent, which recites
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`“wherein the identifier of each licensed content item is based at least in part of the function of at
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`least some of the data comprising the licensed content item.” ‘3 10 Patent, Claim 6, at 38: 16—18.
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`PersonalWeb asserts that the words “at least some of the data” indicate an “identifier” can be
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`5 This also addresses any concerns that the Court’s construction is circular by defining “substantially unique
`identifier” as “substantially unique.”
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`based on less than all
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`the data comprising the licensed content form. Motion at 4. Thus,
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`“identifier” and “substantially unique identifier” are not interchangeable. Id. at 5.
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`Additionally, PersonalWeb argues the construction should not include the phrase “for use
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`in a computer network.” Id. at 7. Instead, PersonalWeb contends an identifier can be used in a
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`computer network or on a single computer. Id. In support, it cites a portion of the specification
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`teaching an embodiment using “one or more processors (or computers).” ‘66 “791 Patent, at
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`4:58—61. Thus, PersonalWeb believes NetApp and Amazon’s construction improperly imports a
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`limitation from an embodiment into the Claims. Id. at 8.
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`NetApp and Amazon argue “identifier” as used in “substantially unique identifier” in the
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`‘791 Patent should be construed as “a name or a substitute for a name for a data item for use in a
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`computer network.” Response at 16. Defendants base this construction on statements made by
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`PersonalWeb during the lPR of the ‘791 Patent. Defendants contend PersonalWeb distinguished
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`the ‘791 Patent from prior art by arguing the result of an algorithm in the reference did not serve
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`as a name or substitute for a name in a computer network. See id. at 17. Based on this statement,
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`Defendants
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`assert
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`that
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`“PersonalWeb deliberately and unambiguously disclaimed any
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`interpretation of “identifier” that is not a name or a substitute for a name.” Id. at 18.
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`At the hearing,
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`it became clear the parties’ primary dispute focuses on “identifier” as
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`used in Claims 1, 5, and 6 of the ‘310 Patent.6 Those claims use “identifier” with no preceding
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`modifier ”(such as “substantially unique” or “data”). Google seeks a construction that would give
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`“identifier” and “substantially unique identifier” the same meaning. The language of the Claims
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`indicates why Google’s position is improper.
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`6 Claims 5 and 6 depend from independent Claim 1.
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`l7
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`Claim 1 of the ‘310 Patent does not contain the phrase “substantially unique identifier.”
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`However, it includes a similar conceptw—the “content—based name.” A content~based name is:
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`Based at least in part on a function of at least some of the data which comprise the
`contents of the particular data item, wherein the function comprises a message
`digest function or a hash function, and wherein two identical data items will have
`the same content—based name.
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`‘310 Patent, Claim 1, at 37:50~54. Later,
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`the claim recites “ascertaining whether or not the
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`content—based name for the particular data item corresponds to an entry in a database comprising
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`a plurality of identifiers.” Id. at 37:56—59. In the context of this claim language,
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`the term
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`“identifiers” is used in a generic manner;