Case 6:11-cv-00287-MHS-KNM Document 433 Filed 08/16/13 Page 1 of 25 PageID #: 4749
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`§§§
`
` CIVIL ACTION NO. 6:11-cv-287-MHS-JDL
`
`§§
`
`CONSOLIDATED LEAD CASE
`
`§§§§
`
`MACROSOLVE, INC.
`
`v.
`
`ANTENNA SOFTWARE, INC., et al.,
`
`
`
`MACROSOLVE’S OPENING MARKMAN BRIEF
`
`RPX-1006
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`Case 6:11-cv-00287-MHS-KNM Document 433 Filed 08/16/13 Page 2 of 25 PageID #: 4750
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION.......................................................................................................................................... 1
`
`II. BACKGROUND ............................................................................................................................................ 1
`
`III. THE COURT SHOULD ADOPT MACROSOLVE’S PROPOSED CONSTRUCTIONS ..... 4
`
`A. “questionnaire” .................................................................................................................4
`
`B. “tokens”.............................................................................................................................7
`
`C. “tokenizing” ......................................................................................................................9
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`D. “executing at least a portion of said plurality of tokens…” ............................................11
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`IV. THE REMAINING TERMS DO NOT REQUIRE FURTHER CONSTRUCTION .............13
`
`A. “tokenizing said questionnaire…” ..................................................................................13
`
`B. “after said first wireless modem or wireless LAN network connection is terminated,
`executing…” ...................................................................................................................14
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`C. “series of questions” .......................................................................................................15
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`D. “terminating said first … connection / taking said handheld …communication” ..........16
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`E. “incorporating said transmitted tokens…thereby modifying said questionnaire” ..........17
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`V. NOT EVERY STEP OF THE METHOD CLAIMS MUST BE PERFORMED IN
`ORDER ..................................................................................................................................19
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`VI. CONCLUSION ............................................................................................................................................20
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`TABLE OF AUTHORITIES
`
`Cases
`
`Afg Indus., Inc. v. Cardinal Ig Co., Inc.,
` 239 F.3d 1239 (Fed. Cir. 2001) ................................................................................................... 5
`
`Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc.,
` 243 Fed. Appx. 603 (Fed. Cir. 2007)......................................................................................... 19
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
` 256 F.3d 1323 (Fed. Cir. 2001) ................................................................................................. 19
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
` 358 F.3d 898 (Fed. Cir. 2004) ............................................................................................... 6, 12
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996) ........................................... 1
`
`Orion IP, LLC v. Staples, Inc.,
`406 F.Supp.2d 717 (E.D. Tex. 2005)......................................................................................... 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)…………………………………………...…………………..16
`
`Vitronics Corp. v. Conceptronic, Inc.,
` 90 F.3d 1576 (Fed. Cir. 1996) ..................................................................................................... 1
`
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`I.
`
`
`
`INTRODUCTION
`
`Under Markman v. Westview Instruments, it falls to a district court to construe the scope
`
`and meaning of the patent claims. 517 U.S. 370, 390 (1996). Under the Supreme Court’s
`
`guidance, this includes determining the scope of the patent—that is, the metes and bounds of the
`
`invention—as well as the meaning of terms used in the claims, providing guidance to a lay jury
`
`of what the claims actually mean. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). All of this is done as a matter of law, before the claims reach the fact finder to
`
`determine infringement or invalidity. Id.
`
`
`
`MacroSolve has undertaken to properly determine the “scope and meaning” of the claim
`
`terms, in the context of the intrinsic evidence—the claims, specification, and patent prosecution,
`
`and the extrinsic evidence. See id.
`
`In contrast, defendants repeatedly propose constructions that improperly limit the scope
`
`of the claims. For example, defendants attempt to rewrite “questionnaire” to include the
`
`limitation that it must be a complete form or program and that it must include internal branching
`
`logic, neither of which are required by the claim language, specification or file history. The
`
`Court should adopt MacroSolve’s proposed constructions.
`
`II.
`
`BACKGROUND
`
`The patent-in-suit, U.S. Patent No. 7,822,816 (attached as Exhibit 1), entitled “System
`
`and Method for Data Management,” relates generally to a method of collecting data from
`
`handheld devices. Earlier methods of collecting data from handheld devices required hard
`
`coding. In order to make a change in the questionnaire, or to create a new questionnaire, it was
`
`necessary to re-write the source code to reflect the new questions, re-compile the code, and re-
`
`install the program on the handheld devices. This was particularly burdensome if different types
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`of handheld devices were being used, because the code would have to be separately compiled for
`
`each particular type of device. It was also burdensome because the entire program would have to
`
`be transmitted to the handheld device, which could be difficult, or impossible, depending on the
`
`type of network connections available.
`
`These types of problems are addressed by the 816 Patent. In the late 1990’s, the founder
`
`of MacroSolve, J. David Payne, had spent many months programming an application for a
`
`specific handheld device. When the handheld device was discontinued, the software designed
`
`for the device became worthless since it would have to be re-coded for the replacement device.
`
`To overcome these problems, Mr. Payne invented a method of data collection that separated the
`
`survey program running on the device from the surveys themselves.
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`Mr. Payne’s invention is depicted, in part, in the following figure from the 816 Patent:
`
`As shown in this figure, a questionnaire is processed by a computer 22. Computer 22
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`tokenizes the questionnaire so that it can be transmitted to handheld device 28 in a format that a
`
`program running on the handheld device can understand. Using this scheme, when the
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`questionnaire is updated, it is not necessary to edit, compile, and re-install the program running
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`on handheld device 28. Instead, the questionnaire can be changed, re-tokenized, and only the
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`tokenized questionnaire need be sent to the handheld device. This has multiple possible benefits,
`
`including not only the avoidance of burdensome re-compilation procedures, but also the ability
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`to distribute updated questionnaires to handheld devices over low-bandwidth network
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`connections.
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`MacroSolve has asserted two independent claims (Claims 1 and 11), along with several
`
`dependent claims (Claims 2-7 and 12-14). Below are the two asserted independent claims with
`
`the disputed terms emphasized:
`
`1. A method for managing data including the steps of:
`(a) creating a questionnaire comprising a series of questions;
`(b) tokenizing said questionnaire; thereby producing a plurality of tokens
`representing said questionnaire;
`(c) establishing a first wireless modem or wireless LAN network connection with
`a remote computing device;
`(d) transmitting said plurality of tokens to a remote computing device via said
`first wireless modem or wireless LAN network connection;
`(e) terminating said first wireless modem or wireless LAN network
`connection with said remote computing device;
`(f) after said first wireless modem or wireless LAN network connection is
`terminated, executing at least a portion of said plurality of tokens
`representing said questionnaire at said remote computing device to collect a
`response from a user;
`(g) establishing a second wireless modem or wireless LAN network connection
`between said remote computing device and a server;
`(h) after said second wireless modem or wireless LAN network connection is
`established, transmitting at least a portion of said response from the user to said
`server via said second wireless modem or wireless LAN network connection; and
`(i) storing said transmitted response at said server.
`
`11. A method for collecting survey data from a user comprising the steps of:
`(a) creating a questionnaire comprising a series of questions;
`(b) tokenizing said questionnaire; thereby producing a plurality of tokens
`representing said questionnaire;
`(c) storing said plurality of tokens on a computer readable medium on a first
`computer;
`(d) placing a handheld remote computing device into electronic communication
`with said first computer;
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`(e) transmitting said plurality of tokens to said handheld remote computing
`device;
`(f) taking said handheld remote computing device out of electronic
`communication with said first computer;
`(g) after said handheld remote computing device has been taken out of
`electronic communication with said first computer,
`(g1) executing at least a portion of said plurality of tokens
`representing said questionnaire on said handheld remote computing
`device to collect a response from a user, and,
`(g2) storing within said remote computing device said response from the
`user;
`(h) placing said handheld remote computing device into electronic
`communication with a second computer;
`(i) transmitting at least a portion of said response stored within said handheld
`remote computing device to said second computer; and,
`(j) forming a visually perceptible report from any of said at least a portion of said
`response so transmitted.
`
`III. THE COURT SHOULD ADOPT MACROSOLVE’S PROPOSED
`CONSTRUCTIONS
`
`A.
`
`“questionnaire”
`
`
`
`Disputed Term
`questionnaire
`
`MacroSolve’s Construction
`a request for information, whether
`collected automatically or manually
`
`Defendants’ Construction
`a complete form or program that
`includes questions and internal
`branching logic, i.e., instructions that
`provide a path from one question to
`another based upon a user’s response
`
`The 816 patent makes clear that the claimed “questionnaire” can be any type of a request
`
`for information, whether collected automatically or manually. It repeatedly explains that the
`
`term “questionnaire” is meant in a broad sense. For example, the patent explains that the term
`
`questionnaire is used to refer to a simple series of questions or statements. See id. at 8:17-19
`
`(“For purposes of the instant disclosure, the series of questions/statements will collectively be
`
`referred to as a questionnaire.”). And the patent is explicit that it is not necessary for a user to be
`
`presented with the questions or for the user to provide the information in response. Rather, the
`
`questions can be requests for information that are collected automatically by the handheld
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`device. See id. at 5:35-37 (“[A]t least some of the information that is responsive to the designed
`
`questionnaire may be collected automatically rather than entered manually, e.g., time and date,
`
`position information if the device includes a GPS receiver, etc.”). The term “questionnaire,” as
`
`used in the context of the 816 Patent, refers broadly to any type of request for information,
`
`whether collected automatically or manually.
`
`Defendants’ proposed construction includes two unwarranted limitations.
`
`First, it requires that the questionnaire include a “complete” form or program. The claim
`
`language itself requires the claimed questionnaire to comprise a series of questions. See, e.g.,
`
`step (a) of claim 1 (“creating a questionnaire comprising a series of questions”) (emphasis
`
`added). But there is no requirement that it be a “complete” form or program. Nor is it clear what
`
`defendants mean by “complete.” But whatever defendants mean, the fact that the claim language
`
`specifically uses the word “comprising” suggests that there is no “complete” requirement.
`
`“Comprising” is an open transition word that makes clear that the recited elements must be
`
`present, but other elements may also be present. Afg Indus., Inc. v. Cardinal Ig Co., Inc., 239
`
`F.3d 1239, 1245 (Fed. Cir. 2001) (“We have consistently held that the word ‘comprising’ is an
`
`open transition phrase.”). Indeed, the patent provides a clear example where a questionnaire is,
`
`in some sense, incomplete, but yet should still be covered by the claims of the patent. It provides
`
`a particular embodiment in which the questionnaire can be incrementally updated, for example,
`
`by adding additional questions to the original questionnaire. See Ex. 1 at 9:1-8 [816 Patent]. But
`
`there is no reason to think that the original questionnaire is not a “questionnaire” even though it
`
`is not “complete” in some sense.
`
`The second unwarranted limitation defendants seek is the requirement that the
`
`questionnaire be a form or program that includes “internal branching logic.” Nothing about the
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`word “questionnaire” requires branching logic. And nothing in the specification or prosecution
`
`history demonstrates that the patent applicant somehow defined the word “questionnaire” to add
`
`a requirement that branching logic be included. True, the 816 patent specification describes
`
`particular embodiments in which branching logic is included. See, e.g., Ex. 1 at 8:48-56 (“For
`
`example, the questionnaire designer might desire to create a form that asks the user different
`
`questions; depending on whether the user was male or female.”) (emphasis added). But those
`
`are only preferred embodiments, not part of the definition of the term “questionnaire.”
`
`Defendants’ proposed construction is also inconsistent with the structure of the claims as
`
`a whole and violates the doctrine of claim differentiation. While all of the claims of the 816
`
`patent recite a “questionnaire,” only some of the claims require the “questionnaire” to include
`
`branching logic. Claim 1, for example, simply requires the questionnaire to be created and
`
`tokenized:
`
`1. A method for managing data including the steps of: (a) creating a questionnaire
`comprising a series of questions; (b) tokenizing said questionnaire;
`
`But claim 3, which depends directly on claim 1, adds the further requirement that a “branching
`
`path” is included in the questionnaire for the possible response to the questions:
`
`(iii) identifying within said questionnaire design computer program a branching
`path in said questionnaire for each possible response to each question of said
`series of questions.
`
`So defining the word “questionnaire” to require branching logic would not make sense in
`
`view of the differences between the independent and dependent claims. See, e.g., Liebel-
`
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“where the limitation that is
`
`sought to be ‘read into’ an independent claim already appears in a dependent claim, the doctrine
`
`of claim differentiation is at its strongest”).
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`
`
`B.
`
`“tokens”
`
`Disputed Term
`tokens
`
`MacroSolve’s Construction
`any nonreducible textual element in
`data that is being parsed
`
`Defendants’ Construction
`computer code that point to each
`question and response and correspond to
`operating logic, and that are recognized
`by the operating system as valid
`instructions
`
`“Token” is a term of art in computer science. A “token” is a “nonreducible textual
`
`element in data that is being parsed.” This definition comes directly from the Microsoft
`
`Computer Dictionary, 5th Edition, a dictionary that defendants previously relied upon for this
`
`claim term. See Ex. 2 at 522 [Microsoft Computer Dictionary, 5th Edition]; Ex. 4 at p. 2-3
`
`[Defendants’ P.R. 4-2 Disclosure]. This is the exact definition that MacroSolve asks the Court to
`
`adopt.
`
`
`
`Unlike defendants’ proposed constructions, the definition proposed by MacroSolve has
`
`the virtue of being both accurate and from a neutral source, a technical dictionary from the
`
`relevant field that all parties have acknowledged is applicable. (MacroSolve’s proposed
`
`definition is also much shorter and less complicated than defendants’ proposed construction.)
`
`The “tokenizing” process is one in which the data (in this case the questionnaire) is converted
`
`into atomic (i.e., “non-reducible”) elements that each have a specific meaning to the parser (in
`
`this case, the program reading and executing the tokens on the handheld device). When the data
`
`is sent to the handheld device, it is sent to it in a tokenized form that the handheld device will be
`
`capable of reading and making sense of (parsing).
`
`An example of tokenizing can be illustrated with the transmission of "111111." Using
`
`tokenizing, this data can be transmitted as "[esc][6][1]", whereby "[esc]" would be the marker
`
`designating that the data following is encoded, "[6]" would designate the repeat count, which is
`
`followed by the data that is to be repeated, herein coded as "[1]." Advantageously, the
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`transmission of an entire phrase such as "Enter your account number" may likewise be
`
`compressed by assigning a code/token to the phrase as a whole. For example, the code/token "1"
`
`may designate this phrase and would be stored in the token tables of both the receiver and
`
`transmitter. The transmission of this entire phrase would then only require the transmission of
`
`[esc][1], significantly reducing the amount of data necessary to be transmitted. Through the use
`
`of the token table on the receiving unit, the original phrase is reconstructed without any loss of
`
`data. See Ex. 1 at 4:16-36.
`
`
`
`Defendants’ proposed construction attempts to inject two different limitations into the
`
`definition of “tokens”: (1) defendants say that tokens must “point to each question and response
`
`and correspond to operating language”; and (2) defendants say that the tokens must be
`
`“recognized by the operating system as valid.” Neither of these additional limitations is
`
`required.
`
`First, the construction of tokens should not be limited to pointing to each question and
`
`response and corresponding to operating language. In fact, the patent gives at least two
`
`examples of tokens that do not point to a question, response, or operating language – the final
`
`review token and a token that marks questions as required. Ex. 1 at 9:36-41.
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`The review tokens are used to mark questions as required and alert the user when a
`
`required question was not answered. Id. at 9:36-41. For example, the questionnaire could
`
`require the user to enter their name. This question would be marked by a token indicating it is a
`
`required question. If a user did not provide a response to the question and attempted to submit
`
`the responses, the final review token would alert the user that a required question was not
`
`answered and instruct the user to go back and provide the proper response.
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`Both instances fall outside the scope of defendants’ proposed construction that the token
`
`be limited to pointing to a question or response and correspond to operating language.
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`Defendants attempt to narrow the construction by cherry picking a phrase from the description of
`
`the preferred embodiment and reading that specific example into the claims.
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`
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`Finally, “tokens” are not required to be recognized as valid by the operating system of the
`
`handheld devices. True, the specification discusses the invention in terms of “operating
`
`systems.” See, e.g., Ex. 1 at 4:16-31 (describing various objects of the inventions as providing
`
`an “operating system” for handheld computers with various functionality). But the specification
`
`is clear that it is not necessarily talking about the native operating system of the handheld
`
`devices, but rather another program that can be installed on the handheld devices, a program that
`
`runs on top of the devices’ operating system and that is capable of executing the tokenized
`
`questionnaires. See, e.g., Ex. 1 at 7:35-39 (“each remote device, preferably a handheld
`
`computer, is provided with an operating instruction system (‘OIS’) which overlays its native
`
`operating system”) (emphasis added). And even that example is only one possibility. The
`
`degree to which the programs running on the handheld device are integrated with the operating
`
`system is simply not something that is addressed by the claims of the 816 Patent. See, e.g.,
`
`Claim 1 (requiring the method to include the step of “executing at least a portion of the tokens . .
`
`. at said remote computing device”).
`
`C.
`
`“tokenizing”
`
`MacroSolve’s Construction
`tokenizing: to assign tokens to
`elements of the questionnaire
`
`Defendants’ Construction
`coding the questionnaire in order to
`create a list of tokens [as defined
`herein] and to reduce to bandwidth
`
`Disputed Term
`tokenizing said
`questionnaire;
`thereby producing
`a plurality of
`tokens
`representing said
`questionnaire
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`
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`MacroSolve contends that only the term “tokenizing” be construed and the remaining
`
`phrase does not require construction as addressed below. Once “tokens” is properly construed,
`
`the meaning of “tokenizing” is clear. It is simply to assign tokens to the elements of the
`
`questionnaire. This is exactly what the 816 Patent teaches. See Ex. 1 at 8:15-17 (“This series of
`
`questions or statements will have been constructed on computer 22 and reduced to tokenized
`
`form for transmission to the handheld 28.”) (emphasis added); 8:40-43 (describing how tokens
`
`are “assigned” to questions).
`
`
`
`In addition to the unwarranted limitations that defendants seek to add to the term “token”
`
`discussed above, defendants seek to inject a third limitation by including “to reduce bandwidth”
`
`in their proposed definition of “tokenizing.”
`
`“Tokens” are not required to reduce bandwidth. True, the numerous potential benefits
`
`provided by the tokenization scheme disclosed and claimed by the 816 patent include reducing
`
`bandwidth requirements. But that is only one possible benefit. See, e.g., Ex. 1 at 5:40-46 (“In
`
`another aspect of the present invention, the program and user responses are coded in such a
`
`fashion as to substantially reduce the bandwidth requirements of the network connection. Since
`
`many of the networking options for handheld devices provide limited bandwidth, best use may
`
`be made of the available throughput by coding, or tokenizing, program information and
`
`responses.”) (emphasis added).
`
`
`
`Indeed, during prosecution, MacroSolve made it clear to the Patent Office that the
`
`patented claims were not limited to circumstances in which tokenizing is used to reduce
`
`bandwidth requirements. MacroSolve expressly stated that “claim 1 does not recite tokenizing
`
`said questionnaire ‘for reducing bandwidth requirements’ as is asserted in the Office Action.”
`
`Ex. 3 at CWSC_R1_000173 [May 3, 2010, Response to Office Action]. MacroSolve went on to
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`explain that there were many other possible benefits of tokenizing, including the ability to be
`
`device indifferent or to provide enhanced data security. Id. The Examiner accepted this
`
`argument and allowed the claims over the prior art. Id. at CWSC_R1_000148-149 [Sept. 7, 2010,
`
`Notice of Allowability].
`
`
`
`D.
`
`“executing at least a portion of said plurality of tokens…”
`
`MacroSolve’s Construction
`executing at least a portion of
`said plurality of tokens:
`processing at least some of
`the tokens so as to present at
`least part of the questionnaire
`
`Defendants’ Construction
`performing, at the remote
`computing device, the operating
`instructions corresponding to at
`least some of the tokens
`
`Disputed Term
`executing at least a
`portion of said plurality
`of tokens representing
`said questionnaire at said
`remote computing device
`to collect a response
`from a user / executing at
`least a portion of said
`plurality of tokens
`representing said
`questionnaire on said
`handheld remote
`computing device to
`collect a response from a
`user
`
`The parties agree that this claim term phrase refers to “processing at least some of the
`
`tokens.” The dispute is what the processing must be for. MacroSolve’s construction requires
`
`processing “so as to present at least part of the questionnaire” whereas defendants propose that
`
`the processing must perform, at the remote computing device, the operating instructions
`
`corresponding to at least some of the tokens.
`
`
`
`MacroSolve’s proposed construction is consistent with the language of the claims. For
`
`example, claim 1 specifically recites the purpose of “executing” the tokens: “to collect a
`
`response from a user.” The language of claim 1 does not refer at all to “operating instructions.”
`
`
`
`MacroSolve’s proposed construction is also consistent with the specification. In all of
`
`the examples given in the specification, the tokens are executed to present questions (i.e., to
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`prompt the device to display a question to a user or to prompt the device itself to automatically
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`collect information such as date, time, or GPS location). See, e.g., Ex. 1 at 9:23-29 (“In such an
`
`event, the questionnaire might contain questions related to service time, cleanliness, friendliness
`
`of the employees, etc., all of which would potentially be of interest to the owner/client. The user
`
`will preferably respond to each question in turn…”), 10:38-41 (“As the mystery shopper enters
`
`the parking lot, the shopper will be prompted to enter a store number or location. If the handheld
`
`computer is equipped with a GPS receiver, this information could be entered automatically. Of
`
`course the time and date from the computer's real time clock are preferably recorded in the
`
`form.”).
`
`
`
`True, the patent also provides some examples in which tokens are executed to perform
`
`operating instructions, such as math or control operations. One example is tokens used to
`
`perform steps related to branching logic. But “executing tokens” corresponding to a
`
`“questionnaire” does not necessarily require the performance of such functions. That is optional
`
`functionality that falls within the scope of the claim language, but that is not required by the
`
`claim language. See Ex. 1 at 8:48-51 (“For example, the questionnaire designer might desire to
`
`create a form that asks the user different questions; depending on whether the user was male or
`
`female.”) (emphasis added).
`
`Indeed, there are separate, dependent claims that are specifically directed to those
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`embodiments. See, e.g., Claim 4 (adding further limitation that tokens correspond to not only
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`questions, but also the types of responses and “branching paths”). That these optional
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`functionalities are specifically recited in dependent claims is further evidence that the
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`“executing” claim language that appears in all of the claims should not be construed as
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`defendants propose to require the performance of operating instructions. Liebel-Flarsheim Co. v.
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`RPX-1006
`Page 15 of 25
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`

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`Case 6:11-cv-00287-MHS-KNM Document 433 Filed 08/16/13 Page 16 of 25 PageID #: 4764
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`Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“As this court has frequently stated, the
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`presence of a dependent claim that adds a particular limitation raises a presumption that the
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`limitation in question is not found in the independent claim.”).
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`IV.
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`THE REMAINING TERMS DO NOT REQUIRE FURTHER CONSTRUCTION
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`The remaining terms and phrases proposed for construction by defendants consist of
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`simple language that does not require further construction.
`
`A.
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`“tokenizing said questionnaire…”
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`Disputed Term
`tokenizing said questionnaire; thereby
`producing a plurality of tokens representing
`said questionnaire
`
`Defendants’ Construction
`coding the questionnaire in order to create a
`list of tokens [as defined above] and to reduce
`to bandwidth
`
`Beyond the terms “tokenizing” and “questionnaire” discussed above, the phrase
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`“tokenizing said questionnaire; thereby producing a plurality of tokens representing said
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`questionnaire” should not be construed by the Court. The plain language of the claims should
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`apply because the jury will understand the plain, ordinary meaning of this phrase. See, e.g.,
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`Orion IP, LLC v. Staples, Inc., 406 F.Supp.2d 717, 724-25 (E.D. Tex. 2005) (holding that simple
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`terms like “user” and “customer” do not require further construction when the patent uses them
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`in their ordinary sense).
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`Defendants ask the Court to construe the term to read an unnecessary limitation into the
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`claims. Specifically, defendant’s proposed construction adds the limitation that the tokens
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`reduce bandwidth requirements. This limitation comes from descriptions of the preferred
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`embodiments, and should not be included in the definition.
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`True, the specification discloses one feature of tokenizing which is to reduce bandwidth.
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`But far from saying that the term “tokens” is only that feature, the specification expressly states
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`RPX-1006
`Page 16 of 25
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`

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`Case 6:11-cv-00287-MHS-KNM Document 433 Filed 08/16/13 Page 17 of 25 PageID #: 4765
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`that it is describing only a feature of the invention, which need not be covered by all of the
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`claims:
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`It is yet a further object of the present invention to provide an operating system
`for a handheld computer wherein programming steps and data are tokenized to
`reduce the load on a communication channel of finite bandwidth.
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`In another aspect of the present invention, the program and user responses are
`coded in such a fashion as to substantially reduce the bandwidth requirements of
`the network connection. Since many of the networking options for handheld
`devices provide limited bandwidth, best use may be made of the available
`throughput by coding, or tokenizing, program information and responses.
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`4:27-30; 5:40-46 (emphasis added).
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`In fact, during prosecution the patentee clearly states that “claim 1 does not recite
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`tokenizing said questionnaire ‘for reducing bandwidth requirements’ as is asserted in the Office
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`Action.” Ex. 3 at CWSC_R1_000173 [May 3, 2010, Response to Office Action]. The patentee
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`goes on to say that there are other possible benefits of tokenizing including the ability to be
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`device indifferent and data security, none of which are disclosed in the prior art reference. Id.
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`Moreover, the notice of allowance makes no mention of tokenizing to reduce bandwidth
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`requirements. Id. at CWSC_R1_000148-149 [Notice of Allowability].
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`B.
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`“after said first wireless modem or wireless LAN network connection is
`terminated, executing…”
`
`Defendants’ Con