Case 2:13-cv-00290-JRG-RSP Document 82 Filed 06/24/14 Page 1 of 30 PageID #: 1244
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`CARDSOFT (ASSIGNMENT FOR THE
`BENEFIT OF CREDITORS), LLC
`
`v.
`
`FIRST DATA CORP., et al.
`
`
`
` Case No. 2:13-CV-290-JRG-RSP
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`§§§§§§§
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`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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`On June 10, 2014, the Court held a hearing to determine the proper construction of the
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`
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`disputed claim terms in United States Patents No. 6,934,945 and 7,302,683. After considering
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`the arguments made by the parties at the hearing and in the parties’ claim construction briefing
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`(Dkt. Nos. 65, 70, and 74),1 the Court issues this Claim Construction Memorandum and Order.
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`1 Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
`Memorandum and Order refer to the page numbers of the original documents rather than the
`page numbers assigned by the Court’s electronic docket.
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`Cardsoft (ABC) EXHIBIT 2007
`First Data v. Cardsoft
`IPR2014-00720
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`Case 2:13-cv-00290-JRG-RSP Document 82 Filed 06/24/14 Page 2 of 30 PageID #: 1245
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`Table of Contents
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`BACKGROUND ........................................................................................................................... 3 
`LEGAL PRINCIPLES ................................................................................................................. 4 
`THE PARTIES’ STIPULATED TERMS ................................................................................... 6 
`COLLATERAL ESTOPPEL ....................................................................................................... 7 
`CONSTRUCTION OF DISPUTED TERMS ............................................................................. 8 
`A. “virtual machine means,” “virtual function processor” and “virtual message processor” ... 9 
`B. “message instruction means” .............................................................................................. 17 
`C. “emulatable in different computers having incompatible hardwares or operating
`systems” .............................................................................................................................. 25 
`CONCLUSION ........................................................................................................................... 29 
`APPENDIX A .............................................................................................................................. 30 
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`BACKGROUND
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`
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`Plaintiff brings suit alleging infringement of United States Patents No. 6,934,945 (“the
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`‘945 Patent”) and 7,302,683 (“the ‘683 Patent”) (collectively, the “patents-in-suit”). The
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`patents-in-suit are both titled “Method and Apparatus for Controlling Communications,” and
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`both bear a priority date in March 1997. The ‘945 Patent issued on August 23, 2005. The ‘683
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`Patent issued on November 27, 2007. The Abstract of the ‘945 Patent states:
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`The present invention relates to preparing and processing information to be
`communicated via a network or to or from other data carriers. For
`implementation of a novel “virtual machine” of the present invention, a minimal
`amount of hardware is required. Prior art virtual machines tend to slow down
`operation of the device as they interface between an application program and
`device drivers. The novel virtual machine incorporates a virtual message
`processing means that is arranged to construct, deconstruct and compare messages
`and [that is] applied in the native code of the processor. The message instruction
`means directs and controls the message processor. Similarly, a protocol processor
`means governs and organs [sic, organizes] communications, under the direction of
`a protocol instruction means in the application. These elements of the novel
`virtual machine increase the speed and efficiency and allow implementation of a
`practical device for use in communications, able to be implemented on different
`hardware having different BIOS/OS.
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`The Abstract of the ‘683 Patent states:
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`Disclosed is a device arranged to process messages for communications,
`comprising a virtual machine means including a message processor means which
`is arranged to process messages communicated to and/or to be communicated
`from the device, and message processor instruction means, arranged to provide
`directions for operation of the message processor means. Also disclosed is a
`method for operating a device arranged to process messages for communications
`and a method of programming a device arranged to process messages for
`communications.
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`The ‘683 Patent is a continuation of the ‘945 Patent. Because the patents-in-suit
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`therefore share a common written description and figures, for convenience this Claim
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`Construction Memorandum and Order cites the specification of only the ‘945 Patent.
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`The Court has construed claims of the patents-in-suit in twice before. The Court first
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`construed the claims in CardSoft (Assignment for the Benefit of Creditors) LLC, et al. v.
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`VeriFone Systems, Inc., et al., No. 2:08-CV-98, Dkt. No. 251 (E.D. Tex. Sept. 23, 2011)
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`(Everingham, J.) (“VeriFone”). The VeriFone case proceeded to a trial on the merits and a jury
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`verdict. See No. 2:08-CV-98, Dkt. No. 389, 6/8/2012 Verdict Form. The Court entered a
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`Judgment on October 30, 2013. No. 2:08-CV-98, Dkt. No. 483.
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`The Court next construed claims of the patents-in-suit in CardSoft (Assignment for the
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`Benefit of Creditors), LLC v. The Gores Group, LLC, et al., No. 2:12-CV-325 (E.D. Tex.
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`Nov. 27, 2013) (Payne, J.) (“Gores”). The Gores case ended in a settlement in February 2014.
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`See No. 2:12-CV-325, Dkt. No. 140, 2/11/2014 Order of Dismissal with Prejudice.
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`LEGAL PRINCIPLES
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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 Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
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`by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical
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`Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns
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`Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
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`themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
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`Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
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`understood by one of ordinary skill in the art at the time of the invention in the context of the
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`entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
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`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 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]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
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`(en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.
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`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips,
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`415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This
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`is true because a patentee may define his own terms, give a claim term a different meaning than
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`the term would otherwise possess, or disclaim or disavow claim scope. Phillips, 415 F.3d
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`at 1316. In these situations, the inventor’s lexicography governs. Id. The specification may also
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`resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of
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`the words used in the claims lack sufficient clarity to permit the scope of the claim to be
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`ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the
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`specification may aid the court in interpreting the meaning of disputed claim language, particular
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`embodiments and examples appearing in the specification will not generally be read into the
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`claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
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`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`accord Phillips, 415 F.3d at 1323.
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`
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patent applicant may also define a term in prosecuting the patent. Home
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`Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
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`history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
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`may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
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`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
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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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`(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too
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`broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid a court in understanding the underlying technology and determining
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`the 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 are entirely unhelpful to a court. 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.” Id.
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`THE PARTIES’ STIPULATED TERMS
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`The parties have reached agreement on a construction for one term, as stated in their
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`March 18, 2014 Joint Claim Construction and Prehearing Statement (Dkt. No. 51 at 1-2) and
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`their May 27, 2014 Claim Construction Chart per Local Rule 4-5(d) (Dkt. No. 75, Ex. A at 3).
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`The parties’ agreement is set forth in Appendix A to this Claim Construction Memorandum and
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`Order.
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`COLLATERAL ESTOPPEL
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`Plaintiff has asserted collateral estoppel based on the Court’s construction of claims of
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`the patents-in-suit in VeriFone. (See, e.g., Dkt. No. 65 at 1.)
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`Defendants respond that they were “not a party to the previous lawsuits,” thus “barring
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`any collateral estoppel effects in this case.” (Dkt. No. 70 at 23.) Defendants also note that Gores
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`settled before any final judgment and that VeriFone is currently on appeal. (Id.)
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`Plaintiff’s reply brief does not address collateral estoppel. (See Dkt. No. 74.)
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`Collateral estoppel is not an issue unique to patent law, thus the law of the
`regional circuit applies. See Applied Med. Res. Corp. v. U.S. Surgical Corp., 435
`F.3d 1356, 1359-60 (Fed. Cir. 2006). “[C]ollateral estoppel is appropriate when:
`(1) the identical issue was previously adjudicated; (2) the issue was actually
`litigated; and (3) the previous determination was necessary to the decisions.”
`Pace v. Bogalusa City Sch. Bd., 403 F.3d 272, 290 (5th Cir. 2005).
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`Clear With Computers, LLC v. Hyundai Motor Am., Inc., No. 6:09-CV-479, 2012 WL 8144915,
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`at *11 (E.D. Tex. Jan. 9, 2012) (Davis, J.) (finding failure to show that identical issue was
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`previously litigated), aff’d, No. 2012-1291, 496 F. App’x 88 (Fed. Cir. Feb. 8, 2013); see Pfaff v.
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`Wells Elecs., Inc., 5 F.3d 514, 518 (Fed. Cir. 1993) (“[W]here a determination of the scope of
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`patent claims was made in a prior case, and the determination was essential to the judgment there
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`on the issue of infringement, there is collateral estoppel in a later case on the scope of such
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`claims.”) (citation and internal quotation marks omitted). The party asserting collateral estoppel
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`bears the burden of proving its elements. See Anderson, Clayton & Co. v. U.S., 562 F.2d 972,
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`992 (5th Cir. 1977).
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`Plaintiff has failed to meet its burden. In particular, Plaintiff has failed to establish
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`privity between Defendants and any relevant party. See Meza v. Gen. Battery Corp., 908 F.2d
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`1262, 1266 (5th Cir. 1990) (“[I]t is a fundamental principle of American jurisprudence that a
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`person cannot be bound by a judgment in litigation to which he was not a party.”). Plaintiff’s
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`collateral estoppel argument is therefore rejected.
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`CONSTRUCTION OF DISPUTED TERMS
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`Plaintiff submits that it proposes the constructions that the Court reached in VeriFone and
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`Gores. (Dkt. No. 65 at 11-12.)
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`Defendants respond that “[i]n the aggregate, the prior constructions eviscerate the
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`purported advantages of the claimed technology and thus its novelty, and [Plaintiff] threaten[s] to
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`recapture products requiring customized applications with no discernible virtual machine at all,
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`the very problem that Ogilvy [(the named inventor)] sought to solve.” (Dkt. No. 70 at 1.)
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`Defendants argue that Plaintiff will use its proposed constructions “to capture situations that still
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`require significant customization. These would be situations where programmers essentially
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`‘write once, run once,’ iteratively, for each different hardware/OS [(operating system)] platform,
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`rather than ‘write once and run anywhere,’ as a VM [(virtual machine)] allows.” (Id. at 3.)
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`Plaintiff replies that “Defendants try to argue the existence of a ‘universal portability’
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`limitation in the asserted claims, i.e. the requirement that once an application program is written
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`and compiled for a particular device, every single ePOS [(electronic point of sale)] device in the
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`world must be able to execute that same application without any modification whatsoever.”
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`(Dkt. No. 74 at 1.)
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`The parties submit that each of the disputed terms appears in Claims 1, 12, and 14 of the
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`‘945 Patent and Claim 1 of the ‘683 Patent. (Dkt. No. 51, Ex. A at 1-6.)
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`A. “virtual machine means,” “virtual function processor,” and “virtual message
`processor”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“virtual machine means”
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`“a computer programmed to emulate a
`hypothetical computer for applications relating
`to transport of data”
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`“a computer programmed to emulate a
`hypothetical computer running applications
`that are independent of the communication
`device hardware and operating system”
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`“virtual function processor”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“software which controls and/or selects general
`operations of a communications device”
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`
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`Plaintiff’s Proposed Construction
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`“software implemented in the native code of
`the communications device that processes
`messages, including assembling, disassembling
`and/or comparing messages, for
`communication to and/or from a
`communications device”
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`(Dkt. No. 65 at 7, 8 & 9; Dkt. No. 70 at 12.)
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`“virtual message processor”
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`“software which controls and/or selects general
`operations of a communication device running
`applications that are independent of the
`communication device hardware and operating
`system”
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`Defendants’ Proposed Construction
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`“software implemented in the native code of
`the communications device that processes
`messages, including assembling, disassembling
`and comparing messages, for communication
`to and/or from the communications device
`running applications that are independent of
`the communication device hardware and
`operating system”
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`(1) The Parties’ Positions
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`Plaintiff proposes the constructions that the Court reached in VeriFone and Gores.2 (See
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`Dkt. No. 65 at 7-10.) Plaintiff argues that the specification expressly defines “virtual machine
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`means,” and Plaintiff submits that in VeriFone and Gores the Court rejected the limitation that
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`Defendants here propose. (Id. at 7.) Plaintiff argues that its proposed construction should be
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`adopted for the reasons set forth by the Court in VeriFone. (Id. at 8.) Plaintiff also argues that
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`“[t]here simply is no[] requirement anywhere in the common specification of the patents-in-suit
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`that requires the virtual function processor to run any particular applications or other programs
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`(regardless of whether they are independent of the underlying hardware and operating system).”
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`Id. at 9. Plaintiff further argues that “there is not one single iota of intrinsic evidence that even
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`suggests that the ‘virtual message processor’ must be so limited (i.e. to only run applications that
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`are independent of the communication device hardware and operating system).” (Id. at 9-10
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`(emphasis modified).)
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`Defendants respond that independence from the device hardware and operating system is
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`a critical limitation that is confirmed by the specification. (Dkt. No. 70 at 12-18.) Defendants
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`also cite deposition testimony of the named inventor, Ian Charles Ogilvy, regarding application
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`independence. (See id. at 13-14 & 18.) Further, Defendants cite extrinsic journal articles, as
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`well as decisions by the Court of Appeals for the Federal Circuit, as evidence that “[a]t the time
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`of patent filing, VMs were tightly associated with the ability to run applications independent of
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`platforms.” (Id. at 14.) Finally, Defendants cite prosecution history in which, Defendants argue:
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`“[Plaintiff’s] position was that its software does everything that the Java VM does and more. . . .
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`2 For “virtual machine means” and “virtual function processor,” the Court reached the same
`construction in Gores as in VeriFone. VeriFone at 14 & 20; Gores at 11 & 17. For “virtual
`message processor,” the parties in Gores agreed upon a construction that differed only slightly
`from the Court’s construction in VeriFone. Compare VeriFone at 19 with Gores at 12 & 46.
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`All agreed that it processed generic-language Java instructions—instructions that ‘are not
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`hardware specific.’ * * * CardSoft’s VM thus has all of the attributes of the Java VM and a
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`critical, distinguishing addition, the ‘virtual message processor.’” (Id. at 17.) Defendants argue
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`that Plaintiff here takes a contrary position that “would encompass even systems requiring
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`absolute one-to-one customization of application to platform.” (Id. at 18.)
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`Plaintiff replies that Defendants’ “mischaracterized extrinsic evidence cannot trump the
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`clear and unequivocal definition of ‘virtual machine’ set forth in the specification and asserted
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`claims of the patents-in-suit.” (Dkt. No. 74 at 3.) As to the prosecution history, Plaintiff argues
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`that “[m]erely because [Plaintiff] emphasized [the virtual message processor] as being a basis for
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`patentability does not mean, nor should be interpreted as, [Plaintiff] admitting that the claimed
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`invention was otherwise identical to a Java Virtual Machine.” (Id. at 5.)
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`At the June 10, 2014 hearing, Defendants argued that Plaintiff’s proposed constructions
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`require the mere existence of a virtual machine with no requirement that the virtual machine is
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`actually used. Plaintiff responded by reiterating that although the purpose of the virtual machine
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`is to facilitate portability, the claims do not require that applications are portable. Plaintiff also
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`argued claim differentiation as to Claim 7. Finally, Plaintiff urged that the meaning of
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`“independent” in Defendants’ proposed constructions is unclear.
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`(2) Analysis
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`Claim 1 of the ‘945 Patent is representative and recites (emphasis added):
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`1. A communication device which is arranged to process messages for
`communications, comprising a virtual machine means which includes
`a virtual function processor and function processor instructions for
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`controlling operation of the device, and
`message induction [sic, instruction] means including a set of descriptions
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`of message data;
`a virtual message processor, which is arranged to be called by the function
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`processor and which is arranged to carry out the message handling tasks of
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`assembling the messages, disassembling messages and comparing the messages
`under the direction of the message instruction means that is arranged to provide
`directions for operation of the virtual message processor, whereby when a
`message is required to be handled by the communications device the message
`processor is called to carry out the message handling task,
`wherein the virtual machine means is emulatable in different computers
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`having incompatible hardwares or operating systems.
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`Plaintiff has argued claim differentiation as to Claim 7 of the ‘945 Patent, which recites:
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`7. A device in accordance with claim 1, wherein the message processor
`instruction means is implemented in software defined by the message processor,
`wherein the device includes a microprocessor, and wherein the message
`instruction means do not require translation to the native software code of the
`microprocessor.
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`Claim 7 adds multiple limitations to what is recited in Claim 1, such as that “the device
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`includes a microprocessor.” Plaintiff’s claim differentiation argument is therefore of limited
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`weight. See Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001)
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`(“Claim differentiation, while often argued to be controlling when it does not apply, is clearly
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`applicable when there is a dispute over whether a limitation found in a dependent claim should
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`be read into an independent claim, and that limitation is the only meaningful difference between
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`the two claims.”) (emphasis added).
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`As to the other intrinsic evidence, the specification discloses that a virtual machine can
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`facilitate “portability” of programs:
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`In conventional devices, each time a message is constructed or deconstructed, the
`operation of the machine will be handled by the application program. To change
`operation of the machine, the application must be changed. This is laborious, and
`gives rise to problems, as discussed above.
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`The technique of creating a virtual processor (or in this case microprocessor) is
`well known and referred to as an interpreter. This allows programs to operate
`independent of processor. With the newer technique of also creating virtual
`peripherals then the whole is referred to as a “virtual machine”.
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` virtual machine is computer programmed to emulate a hypothetical computer.
`Different incompatible computers may be programmed to emulate the same
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`hypothetical computer. Any computer programmed to emulate the hypothetical
`computer will thus be capable of executing programs for the virtual computer.
`This creates a complete portable environment for program operations.
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`‘945 Patent at 3:29-46 (emphasis added).
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`The message processor means is preferably translated into the native code of the
`microprocessor in each hardware device on which the virtual machine is to be
`implemented. The message processor instructions are preferably virtual
`instructions to be expressed only in the language defined by the message
`processor means- and thus never requiring translation to any real hardware
`processor.
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` *
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` * *
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`In a preferred embodiment, therefore, a device in accordance with the present
`invention includes a virtual machine including virtual processors which are
`specifically arranged to control message construction, deconstruction, [and]
`comparison and to control the communication of information, both for reception
`from a network and transmission to a network. These operations can therefore be
`carried out at speed, overcoming the problems with known virtual machines and
`interpreters, which tend to operate slower than conventionally programmed
`devices. The virtual machine therefore lends itself particularly to applications
`relating to communications, such as payment terminal devices and other devices
`in which message processing and communication comprise a significant
`proportion of the operation of the device. . . . The virtual machine can be
`implemented on any hardware, BIOS/OS arrangement and therefore facilitates
`portability of programs.
`
`Implementation of such a virtual machine on payment terminal devices of
`different brands enables operation of the payment terminal devices or brands to be
`altered merely by altering application commands generic to all brands. Each
`brand is seen by the application as the same virtual machine.
`
`Id. at 4:5-11 & 4:51-5:8 (emphasis added); see also id. at 4:31-37 (“The protocol processor
`
`instructions are virtual instructions . . . .”).
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`Cardsoft (ABC) EXHIBIT 2007
`First Data v. Cardsoft
`IPR2014-00720
`
`

`
`Case 2:13-cv-00290-JRG-RSP Document 82 Filed 06/24/14 Page 14 of 30 PageID #: 1257
`
`Program Portability
`
`
`Portable Programs
`
`
`CardScript3 allows the writing of totally portable programs[;] it is also possible to
`write programs that are not very portable. Any CardScript program will
`“execute” on any CardScript enabled target, however the result could be of no use
`on the target if special hardware characteristics are required for practical
`operation of the program. CardScript provides a mechanism for avoiding the
`traps and keeping programs portable whilst still taking advantage of special
`hardware when available.
`
`Id. at 22:21-31.
`
`
`
`During prosecution, Plaintiff explained that the claimed invention is different from the
`
`well-known “Java Virtual Machine”:
`
`One important feature of the Java language is that it can be interpreted by a Java
`Virtual Machine. Different versions of Java Virtual Machine are produced to
`interface with different underlying processors and operating systems. Thus, a
`program written in Java language may run on a variety of computers each having
`incompatible hardware or operating systems, and each running a Java Virtual
`Machine. Similar aspects of this type of a virtual machine has [sic, have] been
`described in the Specification . . . .
`
`[T]he communication device as described and presently claimed is quite
`significantly different from the Java Virtual Machine of Stern [(United States
`Patent No. 5,935,249)], because the presently claimed invention includes a
`dedicated virtual message processor, which function is to [sic] perform generic
`handling of messages.
`
`Dkt. No. 70, Ex. D, 10/14/2004 Amendment Under 37 CFR 1.111 at 12 (emphasis modified).
`
`As discussed in the Specification . . ., a virtual machine is a computer, which is
`programmed to emulate a hypothetical computer. This means that different
`incompatible computers (incompatible hardware and operating systems) may be
`programmed to emulate the same hypothetical computer. Applications may then
`be written for the hypothetical computer, which are therefore portable to the
`previously incompatible computers.
`
`Id., Ex. B, 11/18/2002 Response at 3 (emphasis added).
`
`
`3 Defendants submit that “CardScript” was “[t]he once-commercial embodiment of the
`invention.” Dkt. No. 70 at 15.
`
`
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`Cardsoft (ABC) EXHIBIT 2007
`First Data v. Cardsoft
`IPR2014-00720
`
`

`
`Case 2:13-cv-00290-JRG-RSP Document 82 Filed 06/24/14 Page 15 of 30 PageID #: 1258
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`
`
`Nowhere, however, did the patentee definitively state that all virtual machine applications
`
`must be portable or that a virtual machine can run only portable applications. See Omega Eng’g
`
`v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim
`
`interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
`
`evidence and protects the public’s reliance on definitive statements made during prosecution.”)
`
`(emphasis added). For example, applications that can be executed on a virtual machine installed
`
`on a particular device might not operate, or at least not operate properly, when executed on the
`
`same virtual machine on a different device. See ‘945 Patent at 22:21-31 (quoted above).
`
`
`
`As to extrinsic evidence, Defendants have cited a definition of “virtual machine” as:
`
`“Software that mimics the performance of a hardware device, such as a program that allows
`
`applications written for an Intel processor to be run on a Motorola chip.” (Dkt. No. 70, Ex. J,
`
`Microsoft Press Computer Dictionary 498 (3d ed. 1997).) As Defendants have also submitted,
`
`the Court of Appeals for the Federal Circuit has noted that Java applications are not “processor-
`
`specific.” Nazomi Commc’ns, Inc. v. Nokia Corp., 739 F.3d 1339, 1340 (Fed. Cir. 2014).
`
`Further, Defendants have cited CardScript documents stating that: “[t]he main benefits of using
`
`CardScript are: * * * Hardware independence - the same application can run on a variety of
`
`terminals”; and the “Magic” of CardScript is that it “run[s] the same application program on
`
`terminals with different hardware architectures and even different microprocessors.” (Dkt. No.
`
`70, Ex. K, An Overview of CardScript at FDCCS00005046 & FDCCS00005053.)
`
`
`
`Defendants have also cited deposition testimony in which Mr. Ogilvy agreed that “the
`
`application is independent software-wise from the underlying code of the individual machines.”
`
`(Dkt. No. 70, Ex. G, 5/2/2011 Ogilvy dep. at 163:6-9.) First, inventor testimony is of limited
`
`relevance during claim construction. See Howmedica Osteonics Corp. v. Wright Med. Tech.,
`
`
`
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`Cardsoft (ABC) EXHIBIT 2007
`First Data v. Cardsoft
`IPR2014-00720
`
`

`
`Case 2:13-cv-00290-JRG-RSP Document 82 Filed 06/24/14 Page 16 of 30 PageID #: 1259
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`Inc., 540 F.3d 1337, 1346-47 (Fed. Cir. 2008). Second, nothing in