I HENNIGAN, BENNETT & DORMAN LLP
`RODERICK G. DORMAN (SBN 96908)
`2 dormanr6i)hbdlawyers.com
`LAWRE1fCE M. IIADLEY (SNB 157728)
`3 hadle I hbdlawyers.com
`HAZ
`. ANSARI (SBN 190601)
`4 ansarihhbdlawyers.com
`865 South Figueroa Street, Suite 2900
`S Los Angeles, California 90017
`(213) 694-1200 - Telephone
`6 (213) 694-1234 - Facsimile
`7 Attorneys for Plaintiffs, ALTNET, rNC.
`BRILLIANT DIGITAL ENTERTAIN11ENT, INC. and
`8 KINETECH, INC.
`9
`
`10
`
`11
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`12
`
`a
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`Plaintiffs,
`
`16
`
`vs.
`17 STREAMCAST NETWORKS, iNC.
`and MICHAEL WEISS,
`
`13. ALTNET, INC. BRILLIANT DIGITAL) Case No. CV-06-5086 SJO (Ex)
`)
`ENTERTAINIv1ENT, INC. and
`14 KINETECH, INC.,
`) PLAINTIFFS' CLAIM
`) CONSTRUCTION OPENING BRIEF
`15
`)
`) DATE:
`May 7, 2007
`) TIME:
`10:00 a.m.
`) CTRM:
`1600 (Spring Street)
`)
`Hon. S. James Otero
`)
`) Discovery Cutoff: July 10, 2007
`) Pretrial Conference: Sept. 24, 2007
`Trial Date: October 2, 2007
`
`18
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`19
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`Defendants.
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`)
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`3/
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`CV-06-5086 Sb (EX)
`
`PLAINTIFFSt CLAIM CONSTRUCTION OPENING BRIEF
`
`EXHIBIT 2003
`
`NETAPP-PA-003036
`
`

`
`TABLE OF CONTENTS
`
`1Pae)
`
`I.
`
`H.
`
`BACKGROUND TO PLAINTIFFS' U.S. PATENT NOS.
`5,978,791, 6,415,280, AND 6,928,442
`
`PRINCIPLES OF CLAIM CONSTRUCTION
`
`1
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`2 3
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`6
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`7
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`8
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`9
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`z
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`10
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`III.
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`11
`12 IV.
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`13
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`IA
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`A.
`
`B.
`
`Claim Terms Are Presumed To Carry Their Ordinary And
`Customary Meaning
`
`Th.e Presumption That Claim Terms Carry Their Ordinary
`And Customary Meaning May Be Overcome
`
`THE PARTIES' JOINT CLAIM CONSTRUCTION AND PRE-
`HEAR1NGSTATEMENT
`
`PLAINTIFFS' CONSTRUCTION OF THE 11 CLAIM TERMS
`REMAINING IN DISPUTE
`
`A.
`
`The Means Plus Function Claim Terms Of The '791 Patent
`Directly Equate To Portions Of The Data Structures
`And/Or Mechanisms Delineated In The Specification
`
`1.
`
`2.
`
`3.
`
`4.
`
`"Identity means for determining, for any of a
`plurality of data items present in the system, a
`substantially unique identifier"
`
`"Access means for accessing a particular data item
`using the identifier of the data item"
`
`"Requesting means for requesting a data item at a
`current location in the system from a remote location
`in the system, based on the identifier of the data
`item"
`
`"Context means for making and maintaining a
`context association between at least one contextual
`name of a data item in the system and the identifier
`ofthe data item"
`
`1
`
`3
`
`3
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`5
`
`8
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`9
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`9
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`11
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`12
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`14
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`15
`
`CV-06-5086 SJO (EX)
`
`TABLE OF CONTENTS
`
`- -
`
`NETAPP-PA-003037
`
`

`
`TABLE OF CONTENTS (cont'd)
`
`(Page)
`
`5.
`
`"Contextual name access means for accessing a data
`item in the system for a given context name of the
`data item, determining the data identifier associated
`with the given context name, and invoking said
`access means to access the data item using the data
`identifier"
`
`B.
`
`The terms "Substantially Unique Identifier," "Substantially
`Unique Value," "Message Digest Function," And
`"Regions" Are Expressly Defined In the Patent .
`
`1.
`
`2.
`
`3.
`
`4.
`
`A substantially unique identifier should be defined
`as "an identity for a data item generated by
`processing all of the data in the data item, and only
`'the data in the data item, through an.algorithm"
`
`A substantially unique value should be defined as "a
`value generated by a message digest function having
`the following properties: (1) changes to the message
`digest function input are virtually guaranteed to
`produce a different output, and (2) it must be
`computationally difficult to create the same output
`value by applying the same message digest function
`toadifferent input".
`
`A message digest function should be defined as "a
`function which reduces a data block B of arbitraiy
`length to a relatively small, fixed size identifier, such
`that the identifier is virtually guaranteed to represent
`the data block B and only data block B" and should
`further have the, five properties cited in the '791
`Patent, Col.12:62-13:9
`
`A set of regions should be defined as "some units of
`management and control"
`
`C.
`
`Plaintiffs' Proposed Construction Of "Client Request,"
`"Licensed/Authorized Parties," And
`"Unlicensed/Unauthorized Parties"
`
`16
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`17
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`17
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`19
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`20
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`21
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`22
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`1
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`2 3
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`4
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`5
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`6
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`7
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`8
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`10
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`11
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`2
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`1
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
`
`CV-06-5086 SJO (EX)
`
`—11—
`
`TABLE OF CONTENTS
`
`NETAPP-PA-003038
`
`

`
`TABLE OF CONTENTS (cont'd)
`
`1.
`
`2.
`
`The term "client request" should be defined as a
`request originating from any processor
`
`The terms "licensed/authorized parties" and
`"unlicensed/unauthorized parties" should be defined
`as any entity or person that has (does not have)
`permission to do something
`
`DECLARATION OF HAZIM ANSARI
`
`1Pag
`
`22
`
`23
`
`25
`
`I
`
`2
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`3
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`6
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`CV-06-5086 SJO (EX)
`
`—Ii'—
`
`TABLE OF CONTENTS
`
`NETAPP-PA-003039
`
`

`
`LPage)
`
`18
`
`4, 6, 7
`
`3,5
`
`8
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`3, 6, 7
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`7
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`7
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`8
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`4
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`5
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`7
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`3, 6
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`18
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`8
`
`passim
`
`7, 8
`
`5
`
`TABLE OF AUTHORITIES
`
`Abbott Laboratories v. De L.P.,
`110 F. Supp. 2d 667 (Nh. 111. 2000)
`
`CASES
`
`I
`
`2 3
`
`4
`
`S Alloc inc. v. International Trade Commission,
`34 E3d 1361 (Fed. Cir. 2003)
`
`6
`
`Arlington Industries, Inc. v. Bridgeport Fittings. Inc.,
`345 F.3d 1318 (Fed. Cir. 2003)
`
`7
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`8 Budde v. Harley-Davidson. Inc.,
`250 K3d 1369 (Fed. Cir. 2001)
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (FedCir. 2002)
`Ed. Du Pont DeNemours & Co. v. Phillips Petroleum Co.,
`849F.2d1430(Fed.Cir. 1988)
`Envirco Corp. v. Clestra Cleanroom, Inc.,
`209F.3d1360(Fed.Cir.2000)
`In re Ghiron,
`442F.2d985(C.C.P.A. 1971)
`Hoescht Celanese Corp. v. BP Chemicals, Inc.,
`78 F.3d 1575(Fed. Cir. 1996)
`Innova/Pure Water v. Safari Water Filtration System, Inc.,
`381 F.3d 1111 (Fed.Cir.2004)
`J.T. Eaton & Co. V. Atlantic Paste & Glue Co.,
`106F.3d 1563(Fed.Cir. 1997)
`Johnson Worldwide Associates Inc. v. Zebco Corp.,
`175 F.3d 989 (Fed. Cir. J99)
`Nilssen v. Motorola Inc.
`80 F. Supp. 2d9I (r4.D. 111.' 2000)
`23 North American Vaccine v. American Cyanamid Co.,
`7 F.3d 157F(Fed. Cir. 1993)
`24
`Phillips v. AWH
`415 F.3d 13J (Fed. Cir. 2005)
`26 Sage Products Inc. v. Devon Industries, Inc.,
`126 F.3d 1420 (Fed. Cir. 199')
`Standard Oil Co. v. America Cyanamid Co.,
`774 F.2d 448 (Fed. Cir. 1985)
`
`25
`
`27
`
`28
`
`•
`
`•
`
`!
`
`CV-O6-O86 SJO (EX)
`
`-iv-
`
`TABLE OF AUThORITIES
`
`NETAPP-PA-003040
`
`

`
`(Page)
`
`18
`
`6
`
`4
`
`5
`
`8
`
`7, 8
`
`I
`
`TABLE OF AUTHORITIES (cont'd)
`
`2
`
`TM Patents, L.P. v. International Business Machines Corp.,
`72F. Supp. 2d 370 (S.D.N.Y. 1999) ...
`3
`4 Teleflex Inc. v. Ficosa North America Corp.,
`299 I.3d 1313(Fed. Cir. 2002)
`
`Texas Digital System, Inc. v. Teleenix, Inc.,
`30SF3d1193(Fed.Cir.2002)
`Vitronic Corp. v. Conceptronic Inc.,
`90 F.3d 1576 (Fed. Cir. 199)
`
`STATUTES
`
`35 U.S.C. § 112 (1)
`U.S.C. § 112, ¶ 6
`
`6
`
`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`CV-06-5086 Sb (EX)
`
`TABLE OF AUTHORITIES
`
`NETAPP-PA-003041
`
`

`
`1
`
`I.
`
`BACKGROUND TO PLAINTIFFS' U.S. PATENT NOS. 5,978,791,
`
`2
`
`3
`
`6,415,280, AND 6,928,442
`Today, billions of files are transmitted directly from one computer to another
`4 computer throug1i networks referred to as "peer to peer networks." These peer to peer
`networks are ad hoc combinations of computers, each having a software application,
`5
`
`7
`
`6 which allows users to search for, manage, and access data files held by other users
`through a common communication protocol. Extraordinary amounts of data are now
`8 made readily, and rapidly, available to billions of people through peer to peer
`9 networks.
`Critical to the proper functioning of these peer to peer networks is the ability to
`
`10
`
`11 uniquely identify, and access, data without a priori knowledge of the data storage
`12 location and without knowledge of precisely how each user may have chosen to name
`the data. As can be imagined, users adopt widely different approaches to naming
`14 files—a picture of a mountain may be alternatively named "mountain," "mountain
`
`13
`
`15
`
`range," "the peak," "vacation," or "nice picture," depending on the user. To
`
`16 efficiently search for and acquire data, a peer to peer network preferably identifies,
`17 accesses, and/or presents data in a manner that relies, at least in part, on the actual
`
`18 data being sought and not based solely on the way the data happens to be named by a
`user.'
`
`19
`
`20
`
`The patents at issue in this case, U.S. Patent Nos. 5,978,791 (the "791
`
`21 Patent"), 6,415,280 (the "280 Patent") and 6,928,442 (the "442 Patent")
`22 (collectively, the "Patents"), claim computer network systems and methods in which
`23 data items are identified, accessed, and/or managed using data identifiers that are
`24 derived from the actual contents of the data item sought. These inventions have
`25 become fundamental to the operation of numerous peer to peer networks. In fact,
`26 Sharman Networks, distributor of the Kazaa Media Desktop software, which provides
`27 ________________________
`'See Declaration of Hazini Ansari ("Ansari Decl."), Exhibit A, Declaration of
`28 Dr. Robert Dewar, ¶ 9-13.
`
`CV-06.5086 Sb (EX)
`
`—1—
`PLAiNTIFFS' CLAIM CONSTRUCTION OPENING BR1F
`
`NETAPP-PA-003042
`
`

`
`0
`
`I
`
`access to one of the largest peer to peer networks in the world, has been a sublicensee
`2 of the '791 Patent since 2002.2
`
`3
`
`4
`
`5
`
`The .' 791 Patent, entitled "Data Processing System Using Substantially Unique
`Identifiers to Identify Data Items, Whereby Identical Data Items Have the Same
`
`Identifiers," was filed on October 24, 1997 and has a priority date extending back to
`
`6 April 11, 1995. There are 48 claims, including independent claims 1,30,33,35,36,
`38, 40, and 46. The remaining 40 claims are dependent. Plaintiffs accuse StreamCast
`7
`
`8 and Weiss of infringing claims 1-4, 6, 10, 11, 12, 14,21,23,24,29-31, 32, 38,39,40,
`9 and 48. The '791 patent claims novel systems and methods that use certain
`10 mathematical functions which, when applied to files being sought, or to parts of those
`
`11
`
`files, generate substantially unique identifiers. For two data items with exactly the
`12 same content, the substantially unique identifier will be the same; conversely, it is
`
`13
`
`highly likely that data items having different content will generate different
`
`14
`
`identifiers. Once generated, the substantially unique identifier is then used to search,
`15 access, or perform other activities on or with the data item.'
`The '280 Patent, entitled "Identifying and Requesting Data In Network Using
`
`16
`
`17
`
`Identifiers Which Are Based on Contents of Data," was filed on April 1, 1999 as a
`18 continuation of the. '791 patent. There are 55 claims, including independent claims 1,
`
`19 9, 10, 18, 23:27, 31, 34-36, 38, 40, 44, 52-55. The remaining 35 claims are
`20 dependent. Plaintiffs accuse Defendants of' infringing claims 10, 11, 25 and 31. The
`
`21
`
`'280 patent describes a networked information system in which.content is served
`22 based on (a) computing data identifiers, as described above, and then (b) serving
`23 content in response to requests based on these identifiers. As in the '791 patent, the
`24 invention identified data items for access using an identifier sufficiently unique such
`25 that the possibility of clashes (e.g. different data items having the same identifier) can
`26
`
`27
`
`28
`
`2 See Ansari Deci.,¶ 2.
`See Ansari Decl., Exhibit A, Declaration of Dr. Robert Dewar, ¶ 14-18.
`
`CV-06-5086 SJO (EX)
`
`-2-
`PLAINTIFFS' CLAIM CONSTRUCTION OPENING BRIEF
`
`NETAPP-PA-003043
`
`

`
`1
`
`2
`
`statistically ignored.
`Finally, the '442 Patent, entitled "Enforcement and Policing of Licensed
`
`3 Content Using Content-Based Identifiers," was filed on November 15, 2001 as a
`4 continuation of the '280 patent. There are 56 claims, including independent claims 1,.
`
`5
`
`6-10, 13, 14,22,23,31,35-40,42,45-47, and 54-56,. The remaining claims are
`
`6 dependent. Plaintiffs accuse Defendants of infringing claims 1, 2, 4, 5, 7, 14-2 1, 37,
`45, and 52. The '442 patent describes methods and programs in which data is served
`7
`
`8 based on (a) computing data identifiers, as described above, and then (b) providing
`9 the data depending upon whether the party requesting the data is licensed or
`authorized, or determining if the data is authorized or licensed. Again, as in both the
`
`10
`
`11
`
`'791 arid '280 patents, data items are uniquely identified such that the possibility of
`
`12
`
`13
`
`14
`
`clashes becomes statistically negligible.
`II.
`PRINCIPLES OF CLAIM CONSTRUCTION
`The Federal Circuit has established well-settled principles for construing patent
`claims in order to achieve a proper construction. Below is a summary of the legal
`16 standards relevant to the claim construction issues in this case.
`Claim Terms Are Presumed To Carry Their Ordinary And
`A.
`
`15
`
`17
`
`18
`
`19
`
`Customary Meaning
`The claims of the patent define the scope of an invention and therefore courts
`
`21
`
`20 begin the construction process by examining the language of the claim itself. 'Phillips
`v. AWl-i, 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane). Courts indulge a "heavy
`22 presumption" that a claim term carries its ordinary and customary meaning. CCS
`23 Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.'2002); Johnson
`24 Worldwide Associates, Inc. v. Zebco Corp., 175 F.3d 989 (Fed. Cir. 1999) ("a court
`25 must presume that the terms in the claim mean what they say, and, unless otherwise
`26 compelled, give full effect to the ordinary and accustomed meaning of claim terms.").
`27.
`
`In determining what the ordinary and customary meaning of a claim term is,
`28 "the context of the surrounding words in a claim also must be considered." Arlington
`
`CV-06-5086 SJO (%)
`
`-3-
`PLMNTIFFS CLAIM CONSTRUCTION OPENING BRIEF
`
`NETAPP-PA-003044
`
`

`
`I
`
`Industries. Inc. v. Bridgeport Fittings. Inc.. 345 F.3d 1318, 1325 (Fed. Cir. 2003). A
`
`2 court may "immerse itself in the specification, the prior art, and other evidence, such
`
`3 as the understanding of skilled artisans at the time of invention, to discern the context
`
`4
`
`and normal usage of the words in the patent claim." Alloc, Inc. v. International Trade
`
`5 Commission, 342 F.3d 1361 (Fed. Cir. 2003), citing, Hoescht Celanese Corp. v. BP
`6 Chemicals, Inc., 78 F.3d 1575, 1579 (Fed. Cir. 1996). According to the Federal
`7 Circuit in Phillips:
`8
`Importantly, the person of ordinary skill in the art is deemed
`to read the claim term not only in the context of the
`particular claim in which the disputed term appears, but in
`
`9
`
`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
`
`23
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`the context of the entire patent, including the
`specification.... Such a person is deemed to read the words
`
`used in the patent documents with an understanding of their
`
`meaning in the field, and to have knowledge of any special
`meaning and usage in the field. The inventor's words...
`
`must be understood and interpreted by the court as they
`
`would be understood and interpreted by a person in that
`
`field of technology. Thus the court starts the decision
`
`making process by reviewing the same resources as would
`
`that person, to wit, the patent specification and the
`
`prosecution history." Phillips. 415 F.3d at 1312-1313
`
`(internal quotations omitted).
`Courts are cautioned, however, not to import limitations from the specification
`
`24 or prosecution history when discerning the ordinary and customary meaning of a
`claim term. Texas Digital Sys.. Inc. v. Telegenix. Inc., 308 F.3d 1193, 1201 (Fed.
`
`25
`
`26 Cir. 2002) ("Consulting the written description and prosecution history as a threshold
`27 step in the claim construction process, before any effort is made to discern the
`28 ordinary and customary meanings attributed to the words themselves, invites a
`
`CV-06-5086 SJO (EX)
`
`-4-
`PLAINTIFFS' CLAIM CONSTRUCTION OPENING BRiEF
`
`NETAPP-PA-003045
`
`

`
`1
`
`2
`
`violation of our precedent counseling against importing limitations into the claims.").
`
`Dictionaries and scientific treatises may also help supply the pertinent context
`
`3 and usage for claim construction. "In many cases that give rise to litigation
`4
`determining the ordinary and customary meaning of the claim requires examination of
`terms that have a particular meaning in a field of art. Because the meaning of a claim
`
`5
`
`6 term as understood by persons of skill in the art is often not immediately apparent,
`7 and because patentees frequently use terms idiosyncratically, the court looks to 'those
`
`8
`
`sources available to the public that show what a person of skill in the art would have
`9 understood disputed claim language to mean." Phillips, 415 F.3d 1303, 1314
`10 (quoting Innova/Pure Water V. Safari Water Filtration Sys.. Inc., 381 F.3d liii, 1116
`
`11
`
`12
`
`13
`
`(Fed. Cir. 2004)).
`Nonetheless, the intrinsic patent documents are "always highly relevant to the
`claim construction analysis. Usually, it is dispositive; it is the single best guide to the
`
`14 meaning of a disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronic Corp. v.
`
`oi
`
`15 Conceptronic. Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "'[T]he descriptive part of
`16 the specification aids in ascertaining the scope and meaning of the claims inasmuch as
`
`17 the words of the claims must be based on the description. The specification is, thus,
`18 the primary basis for construing the claims." Phillips 415 F.3d at 1315 (quoting
`19 Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
`20 Extrinsic evidence, in general, is viewed "as less reliable than the patent and its
`21 prosecution history in determining how to read claim terms." Phillips, 415 F.3d at
`22 1318.
`23
`
`The Presumption That Claim Terms Carry Their Ordinary And
`
`B.
`
`24
`
`25
`
`Customary Meaning May Be Overcome
`While a court begins with the ordinary and customary meaning of the claim
`
`26 term, it must also examine the intrinsic record to determine whether anything in the
`27 record overcomes the presumption that the term has the ordinary meaning. Arlington
`28 Industries, 345 F.3d at 1326.
`
`CV-06.5086 SJO (EX)
`
`-5-
`PLAINTIFFS CLAIM CONSTRUCTION OPENING BRiEF
`
`NETAPP-PA-003046
`
`

`
`1
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`There are limited circumstances where the "heavy presumption" that a claim
`
`2 term is given its ordinary and accustomed meaning may be overcome and the court
`
`3 may supply a definition of a claim term or phrase different than its ordinary and
`4 accustomed meaning. CCS Fitness, 288 F.3d at 1366, In each circumstance there
`
`5 must be textual language from the patent specification that is clearly associated with a
`6 claim term and its proffered construction. Johnson Worldwide, 175 F.3d at 989,
`
`7
`
`First, a claim term will not receive its ordinary meaning if the patentee acted as
`
`8 his own lexicographer and clearly set forth a defmition of the disputed claim term in
`9 either the specification or prosecution history. j.; Johnson Worldwide, 175 F.3d at
`10 .990; see Phillips, 415 F.3d at 1316 ("[c]onsistent with that general principle, our cases
`recognize that the specification may reveal a special definition given to a claim term
`11
`12 by the patentee that differs from the meaning it would otherwise possess. In such
`
`13 cases, the inventor's lexicography governs.").
`, 14
`Second, a claim term will not carry its ordinary meaning if the intrinsic
`15 evidence shows that the patentee (i) distinguished that term from prior art on the basis
`
`16 of a particular embodiment, (ii) expressly disclaimed subject matter, or (iii) described
`17 a particular embodiment as important to the invention. CCS Fitness, 288 F,3d at
`1366-67.
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`18
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`19
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`In evaluating whether this second situation exists sufficient todepart from the
`20 ordinary means of a term, a court must proceed with caution—on the one hand, a
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`21
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`court must interpret the claims in light of the specification; on the other hand, a court
`22 must avoid impermissibly importing limitations from the specification into the claims.
`23 Alloc, 342 F.3d at 1370. Only statements which evince a "clear and unmistakable
`24 surrender of subject matter" or a "clear disavowal of claim scope" will result in a
`
`25
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`construction that deviates from the ordinary meaning. Teleflex, Inc. v. Ficosa North
`26 America Corp.. 299 F.3d 1313, 1325 (Fed. Cir, 2002).
`Third, whilà the. specification must be considered in determining how a
`27.
`28 patentee used a word or a phrase in the claim, a court cannot give a claim term a
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`I meaning different than its ordinary meaning simply because the specification
`2 describes a certain embodiment as being preferred or only describes one or a few
`3 embodiments. E.I. Du Pont De Nemours & Co. v. Phillips Petroleum Co.. 849 F.2d
`4
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`1430, 1433 (Fed. Cir. 1988) ("It is entirely proper to use the specification to interpret
`5 what the patentee meant by a word or phrase in the claim. But this is not to be
`6 confused with adding an extraneous limitation appearing in the specification, which is
`
`7 improper.").4 If, however, the specification makes clear that the claimed invention is
`
`8 narrower than the claim language might imply, it is entirely permissible and proper to
`9 limit the claims. Alloc, 342 F.3d at 1366, citing. SciMed Life Sys., Inc. v. Advanced
`
`10 Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001).
`Fourth, a claim term will not be given its ordinary and accustomed meaning if
`
`11
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`12 the term "chosen by the patentee so deprives the claim of clarity." CCS Fitness, 288
`13 F.3d at 1367. In such cases, the court must construe the claim term consistent with
`14 the meaning found in the intrinsic patent record. J.T. Eaton & Co. v. Atlantic Paste &
`15 GlueCo., 106F.3d 1563, 1568(Fed.Cir. 1997).
`Lastly, claim terms which are phrased using the word "means" give rise to a
`16
`17 presumption that the inventor used the term advisedly to invoke the statutory
`18 mandates for means-plus-function clauses set forth in 35 U.S.C. § 112, ¶ 6. Sage
`19 Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997). This
`20 presumption is not conclusive. Where "a claim recites a function, but then goes on to
`
`21
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`elaborate sufficient structure, material, or acts within the claim itself to perform
`22 entirely the recited function, the claim is not in a means-plus-function format."
`
`23 Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000),
`24 quoting, Sage Products, 126 F.3d at 1427-28.
`25
`In construing means-plus-function claim limitations, a court must first define
`
`26
`
`27
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`A patentee need not "describe in the pecification every conceivable and possible
`future embodiment of his invention." CCS Fitness 288 F.3d at 1366, quoting,
`28 Rexnord Corp. v. Laitram Corp., 274 K3d 1336, 1i44 (Fed. Cir. 2001).
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`the particular function claimed, and thereafter identify "the corresponding structure,
`2 material, or acts described in the specification." Sage Products, 126 F.3d at 1428!
`3 Means-plus-function claim limitations are construed, pursuant to 35 U.S.C. § 112, ¶6,
`4
`as covering "the corresponding structure, material, or acts described in the
`specification and equivalents thereof."
`6 III. THE PARTIES' JOINT CLAIM CONSTRUCTION AND PRE-
`7
`HEARING STATEMENT
`For the Court's convenience, and consistent with the parties' February 12,
`2007, Joint Claim Construction and Pre-Hearing Statement, Exhibit B to the Ansari
`10 Declaration provides agreed-to constructions for certain terms and Exhibit C lists the
`11 25 disputed terms. For a number of the disputed terms, however, the parties'
`
`8
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`9
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`18
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`12 respective constructions differ in only minor, non-substantive respects, particularly in'
`13 structure identified as performing 'recited means. In these areas, Plaintiffs believe
`14 either construction will not substantively impact claim scope. Accordingly, Plaintiffs
`15 will adopt Defendants' proposed constructions for the additional 13 terms listed in
`16 Exhibit D to the Ansari Declaration.
`17 _____________
`'Whether or qt the specification adequately sets forth structure corresponding to
`the claimed function necessitatesconsideration of that disclosure from the viewpoint
`19 of one skilled in the art. Budde v. Harley-Davidson. Inc., 250 F.3d 1369, 1376 (Fed.
`Cir. 2001), citing 'North American Vaccme v. American Cyanamid Co.. 7 F.3d 1571,
`20 1579 (Fed. Cir. 193); In re Ghiron 442 F.2d 985, 991 (C.C.P.A. 1971) (tat1ng that
`"if such selection would be we1l within the skill of persons skilled in the art,' such
`21
`functional-type block diagrams may be acceptable and, in fact, preferable if they serve
`in conjunction with the rest of the specification to enable a person skilled in the art to
`22 make such a selection andpractice the claimed invention with only a reasonable
`degree of routine expenmentation."). Failure to disclose adequate structure
`23 corresponding to the recited function results in the claim being of indefinite scope and
`thus invalid under 35 U.S.C. § 112 (1). Thus, such a challenge to the patent requires a
`24 finding by clear and convincing evidence that the specification lacks disclosure of
`sufficient structure to be understood by one skilled m the art as being adequate to
`25 perform the recited function. Budde, 250 F.3d at 1376-77.
`26
`6 In the Joint Claim Construction and Pre-Hearing Statement, the Parties
`separately propose a definition for "advertising a data' item." However, this phrase is a
`part of the 'means for advertising a data item' element and should not receive a
`separate construction. Therefore, Plaintiffs do not separately propose a definition for
`28 "advertising a data item."
`
`27
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`IV. PLAINTIFFS' CONSTRUCTION OF THE 11 CLAIM TERMS
`REMAINING IN DISPUTE
`
`To properly construe the claim terms at issue, the Court should determine the
`
`5
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`4 ordinary meaning of the terms from the perspective of one of or4inary skill in the art,
`as read in the context of the entire patent. Phips, 415 F,3d at 1312-1313. A person
`6 of ordinary skill in the art relevant to the Patents in April 1995 would have: (1) at
`7 least a bachelors degree in computer science, electrical engineering, or a related field,
`
`8
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`or equivalent training in the course of employment, service in the military, or
`9 attendance at a trade school, and (2) some experience in the design of network
`10 systems, or a related field.1
`For clarity, Plaintiffs have divided the presentation of its proposed
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`11
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`12 constructions into three sections: (a) the means plus function claim terms (which only
`
`13
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`appear in the '791 Patent), (b) those claim terms ("substantially unique identifier,"
`
`14 "substantially unique value," "message digest function," and "set of regions") whose
`15 definitions are clearly provided by the specification itself, and (c) those claim terms
`
`16 ("client request," "licensed/authorized parties," and "unlicensed/unauthorized
`17 parties") for which their plain and ordinary meaning, when read in the context of the
`18 specification, necessitates constructions that are broader than proposed by
`19 Defendants,
`A.
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`20
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`¶
`
`21
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`22
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`23
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`The Means Plus Function Claim Terms Of The '791 Patent Directly
`Equate To Portions Of The Data Structures And/Or Mechanisms
`Delineated In The Specification
`The patented inventions are directed to systems and methods for the
`24 identification, access, and/or management of data item? using an identifier that is
`
`Ansari DecL, Exhibit F, Deposition of Dr. Dewar ("Dewar Depo."), at 2:12-
`
`21
`
`27.
`
`'The specification expressly defmes data items as follows: "the terms "data" and
`"data item as used herein refer to sequences of bits. Thus. a data item may be the
`28 contents of a file, a portion of a 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,
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`derived from the data item itself, and not wholly dependent upon information external
`
`2 to the data item, such as the name, origin, location, or. address of the data item.9 As a
`
`3 result of this novel approach to data management, numerous benefits and advantages
`4
`
`be achieved, including but not limited to: (a) identifying a particular data item as
`S being present in thesystem or at a location in the system, by examining only the data
`
`6 identities of the data items, (b) providing transparent access to any data item by
`7 reference only to its identity and independent of its present location, and (c) tracking
`
`8 the uses of specific data items and files by content for accounting purposes.'°
`9
`The specification describes the implementation of the invention(s) in the
`
`10 context of a data processing system, which may include a peer-to-peer network,U that
`relies on certain data structures and operates certain software "processes and
`
`11
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`12 mechanisms (services)" which are "grouped into the following categories: primitive
`
`13 mechanisms, operating system mechanisms, remote mechanisms, background
`14 mechanisms, and extended mechanisms."2 The balance of the patent specification,
`15 from columns 6 through 39 provides a detailed description of the data structures used
`16 by the present invention and the mechanisms within each of the five groupings,
`17 including how that mechanism can be used to perform, or support, some type of
`
`18
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`identification, access, or management function. Thus, the systems and methods for
`19 the identification, access, and/or management of data items—and for achieving the
`20 aforementioned benefits and advantages—are expressly defined within this
`21 framework of a data processing system using specific data structures and software
`22
`
`or any other entity which can be represented by a sequence of bits." Ansari Deci.,
`23 Exhibit E, the '791 Patent, CoLI:54-60.
`24
`See Id. at Col .3:32-35. Therefore two pictures of a mountain range—the
`original named "Range" and stored in Location 1 and an exact copy named
`25 "Mountains" and stored m Location 2—would have the same identifier, even though
`they are stored in different locations and have different names.
`'°Seeld. at Col.3:36-Col.4:34.
`"See Id at Col.5:7-16.
`12 See Id. at Col.6:20-24.
`
`26
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`27.
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`28
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`1 mechanisms.
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`2
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`Claims 1-29 of the '791 Patent reflect the same framework. However, instead
`
`3 of using the words "data structure" or "mechanism," the claims use means-plus-
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`4
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`function language to reference the data structure or mechanism that performs the
`
`5 claimed function. While the parties agree as to which limitations require construction
`
`8
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`9
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`1.
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`6 as "means-plus-function" language, they dispute (in five instances) the structure from
`7 the specification corresponding to the recited means:
`"Identity means for determining, for any of a plurality of data
`items present in the system, a substantially unique identifier"
`The "identity means" term is present in independent claim 1 and, consequently,
`
`10
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`11
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`12
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`in dependent claims 2-29. The parties agree that stated function of the identity means
`
`is determining "for any of a plurality of data items present in the system, a
`
`13
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`14
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`substantially unique identifier."
`The specification expressly defines both a data structure and a specific
`15 mechanism that performs the function of "for any of a plurality of data items present
`
`16 in the system" determining "a substantially unique identifier," which is also referred
`17 to as a"True Name," "data identity," or "data identifier." First, the "Calculate True
`18 Name mechanism defines how a True Name, or substantiallyunique identifier, is
`19 actually calculated. Second, the data structure referred to as the local directory
`20 extensions (LDE) table, described at column 8, lines 19 to 26, is a table that indexes a
`21 True Name with a pathname or contextual name (i.e. user prnvided name).'4 The LDE
`22 table is another structure for determining a substantially unique identifier for a data
`
`23 item present in the system. Using the LDE table, a True Name associated with a data
`
`24 item can be identified (or determined) from, for example, its user-provided name.
`25
`The parties agree that the "Calculate True Name" mechanism is at least one
`
`26
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`27
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`28
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`' See Id. at Col.6:6-1O.
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`'4 See Id. atCol.8:19-26.
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`structure for determining a substantially unique identifier.'3 Defendants, however,
`2 ignore the fact that the specification also defmes data structures, such as the LDE
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`3
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`table, from which the substantially unique identifier can be determined. First, the
`4 specification makes it clear that such data structures are important and "used to
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`5 implement the mechanisms described here