Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 1 of 8 PageID #: 4577
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`EPICREALM LICENSING, LP,
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`Plaintiff,
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`AUTOFLEX LEASING, INC., et al.,
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`Defendants.
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`_________________________________________
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`EPICREALM LICENSING, LP,
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`Plaintiff,
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`FRANKLIN COVEY CO., et al.,
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`Defendants.
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`2:05-CV-163
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`2:05-CV-356
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`PLAINTIFF EPICREALM LICENSING, LP'S
`RESPONSE TO REPLY BRIEF IN SUPPORT
`OF DEFENDANTS' OBJECTIONS TO THE REPORT AND
`RECOMMENDATION REGARDING CLAIM CONSTRUCTION
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`EpicRealm submits this Response to the Reply Brief in Support of Defendants'
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`Objections to the Report and Recommendation Regarding Claim Construction ("Reply") filed by
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`defendants on September 25, 2006.
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`I. Law on Disclaimers
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`Defendants claim that the Court of Appeals for the Federal Circuit has recently changed
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`the law concerning disclaimers and that a disclaimer no longer needs to be "clear." Reply at 1-2.
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`In support of this claim, the Reply cites a barrage of new cases not previously cited. Defendants
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`are wrong on this issue. A careful review of these cases shows that the law has not changed.
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`1
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 1
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`

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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 2 of 8 PageID #: 4578
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`Each of the cases cited by defendants recognizes the concept of "clear disclaimer" or "clear
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`disavowal."1 Accordingly, the law on disclaimers is still as follows: "Absent a clear disclaimer
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`of particular subject matter, the fact that the inventor anticipated that the invention may be used
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`in a particular manner does not limit the scope to that narrow context." Brookhill-Wilk 1, LLC v.
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`Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003) (quoted by this Court in Sky
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`Technologies LLC v. IBM, Inc., No. 2:03-cv-00454-DF-CMC (E.D. Tex. September 7, 2005),
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`attached as Exhibit B). Magistrate Judge Craven was correct in concluding that the specification
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`as a whole did not contain a clear disclaimer. Report and Recommendation at 14, 16, 21, and 28.
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`II. "Web Server," "Page Server," and "Concurrently Processes"
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`The primary issue with these terms is whether or not a "clear disavowal" of claim scope
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`exists precluding the use of a partitioned architecture on a single machine. After full briefing of
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`this "machine" issue, Magistrate Judge Craven found that there was no such clear disavowal:
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`The passages cited by the Plaintiff establish that there is not a clear disavowal
`within the specification of the use of a partitioned software architecture on a
`single machine . . . [I]n the specification before this Court, the specification does
`not make clear that the invention must only be operated on separate machines.
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`1 See Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1319 (Fed. Cir. 2006) ("This court has
`recognized that '[w]here the specification makes clear that the invention does not include a particular feature, that
`feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read
`without reference to the specification, might be considered broad enough to encompass the feature in question.'")
`(citations omitted); On Demand Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)
`("[W]hen the scope of the invention is clearly stated in the specification, and is described as the advantage and
`distinction of the invention, it is not necessary to disavow explicitly a different scope."); Wireless Agents, Inc. v.
`Sony Ericsson Mobile Communications AB, 2006 WL 2091197, at *2 (Fed. Cir. 2006) ("The description clearly
`depicts the claimed invention as having the common 'QWERTY' layout" or "any other alphanumeric layout that
`includes a substantially full set of alphanumeric keys."), attached as Exhibit A; Nystrom v. TREX Co., Inc., 424 F.3d
`1136, 1145 (Fed. Cir. 2005) ("Although there was no clear disavowal of claim scope, there was nothing in the
`intrinsic record to support the conclusion that a skilled artisan would have construed the term 'board' more broadly
`than a piece of construction material made from wood cut from a log."); Boss Control, Inc. v. Bombardier Inc., 410
`F.3d 1372, 1379 (Fed. Cir. 2005) ("Because the specification makes clear that the invention involves a two-stage
`interrupt mode, the intrinsic evidence binds Boss to a narrower definition of 'interrupt' than the extrinsic evidence
`might support."); and Astrazeneca AB. v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1340 (Fed. Cir. 2004) ("[W]e hold
`the specification clearly disavows nonsurfactant solubilizers.").
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`2
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 2
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 3 of 8 PageID #: 4579
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`Report and Recommendation at 14 (emphasis added). In challenging this finding, defendants
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`make three arguments. None has merit.
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`First, defendants argue that the specification does not disclose embodiments in which the
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`invention operates on a single machine. Reply at 4. This is wrong. In her Report and
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`Recommendation, Magistrate Judge Craven pointed out two places where the specification
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`describes the invention operating on "a" computer system. Report and Recommendation at 12
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`(citing the '554 Patent at col. 2, ll. 66-67 and col. 3, ll. 55-58) (emphasis added). At the hearing,
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`she noted a third reference in the specification to the invention implemented on "an IBM™
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`Personal Computer." Claim Construction Hearing Transcript at 60 (citing the '554 Patent at col.
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`2, l. 67 to col. 3, l. 3) (emphasis added). At the hearing, Magistrate Judge Craven correctly noted
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`that the argument that defendants now make conflicts with these provisions in the specification.
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`Second, defendants argue that "it's clear from the specifications that epicRealm
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`disparaged [numerous requests being processed on a single machine] and distinguished them
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`from the claimed invention." Reply at 3. Defendants focus on language in the specification at
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`col. 4, ll. 39-53 of the '554 patent, but they take this language out of context. Considering the
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`entire passage in the specification of which this language is a part, id. col. 4, ll. 34-53, as well as
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`other relevant passages (including the three cites above that discuss operation of the invention on
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`"a" or "an" computer system), it is clear that the specification does not limit the invention to
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`operation on multiple machines. As Magistrate Judge Craven found, "the specification does not
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`make clear that the invention must only be operated on separate machines." Report and
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`Recommendation at 14.
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`Last, defendants point to this quotation from an article by inventor Keith Lowery ― "the
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`patent covers the notion of redirecting that request to other machines" ― to argue that the claims
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`3
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 3
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 4 of 8 PageID #: 4580
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`must be read to require that the page server operates on a separate machine from the web server.
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`Reply at 5. Of course, this is extrinsic evidence. The Federal Circuit has cautioned: "We have
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`viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in
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`determining how to read claim terms, for several reasons." Phillips v. AWH Corp., 415 F.3d
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`1303, 1318 (Fed. Cir. 2005). More importantly, the quotation from inventor Lowery is not in
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`any way inconsistent with Magistrate Judge Craven's recommended construction. Claims in a
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`patent specify the minimum elements required for infringement. The recommended construction
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`would, to use inventor Lowery's language, "cover[] the notion of redirecting th[e] request to
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`other machines," as well as covering the notion of software modules residing on the same
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`computer.
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`III. "Intercepting"
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`Magistrate Judge Craven correctly declined to engraft onto the claim term
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`"intercepting" the exclusionary limitation "instead of the Web server executable processing it."
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`Report and Recommendation at 24-25. She found that the specification language on which
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`defendants relied was at best ambiguous. Id. Defendants argue that their proposed construction
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`would not impermissibly exclude an embodiment disclosed in the specification. Reply at 6.
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`Based on a careful review and analysis of the specification, however, Magistrate Judge Craven
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`reached the opposite conclusion. "In at least one embodiment the interceptor 400 is 'an extension
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`of the Web server 201' and the interceptor 400 also performs actions on a request." Report and
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`Recommendation at 25. Defendants cannot square this language in the specification with their
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`proposed construction, which they assert would "exclude the Web server from any processing of
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`the request." Id. Moreover, Magistrate Judge Craven pointed out that "Figure 4 appears to show
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`the request going to the Web server executable 201(E)." Id. at 23. Therefore, defendants'
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`4
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 4
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 5 of 8 PageID #: 4581
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`"proposed claim language would impermissibly exclude the embodiments disclosed within the
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`specification." Id. at 25.
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`IV. "Web Page"
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`The Report and Recommendation states that "a Web page is a mechanism through which
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`static and dynamic content may be displayed." Report and Recommendation at 8-9. Focusing
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`on this language, defendants criticize Magistrate Judge Craven's recommended construction of
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`the term "Web page" "because the recommended construction does not mention the concept of
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`the 'mechanism' needed for a Web page." Reply at 7. This is ironic since defendants' own
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`proposed construction also does not mention the concept of the mechanism needed for a Web
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`page. Reply at 8. The Report and Recommendation makes clear why it would be improper to
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`include the mechanism concept in the construction of "Web page":
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`As described within the specification, a Web page is a mechanism through which
`static and dynamic content may be displayed. The particular addressing
`mechanism at each step of the processing of a dynamic Web page is not noted in
`the specification to be a requirement or of particular importance to the claimed
`invention.
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`Report and Recommendation at 9 (emphasis added); accord, e.g., id. at 7 ("[W]ith respect to
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`Web pages the described concepts are not related to the intricacies of what particular
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`programming languages are used to display a Web page but rather merely the higher level
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`differentiation of static pre-existing Web pages verse dynamically generated Web pages."). The
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`Report and Recommendation, therefore, correctly recognizes that the intricacies associated with
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`a web page are not a requirement of the claimed invention.
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`V. "HTTP-Compliant Device"
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`Defendants argue that the HTTP-compliant device must be a server because there is no
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`difference between the Web Server and the HTTP-compliant device. Magistrate Judge Craven
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`obviously disagreed, recommending different constructions for the terms "Web server" and
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`5
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 5
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 6 of 8 PageID #: 4582
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`"HTTP-compliant device." EpicRealm has explained elsewhere in its Markman briefing why
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`Magistrate Judge Craven ― and not defendants ― is right on this issue. See epicRealm's
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`Opening Brief of June 9, 2006, at 27-29, and EpicRealm's Reply Brief of July 7, 2006, at 38-41.
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`It will not repeat that briefing here.
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`Defendants also argue for a limitation that would require that an HTTP-compliant device
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`"must minimally perform the 'required functions set out in the HTTP specifications.'" Reply at 9.
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`For several reasons, the Court should not add this limitation to the proposed construction.
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`Defendants claim that "the HTTP specification is a well accepted industry standard." Reply at
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`10. The very first page of the document provided by defendants, however, states: "This memo
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`does not specify an Internet standard of any kind." Hypertext Transfer Protocol -- HTTP/1.0 at
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`Appendix B-21, Defendants' Responsive Brief of June 23, 2006 (emphasis added). Also, the
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`document states: "The IESG has concerns about this protocol, and expects this document to be
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`replaced relatively soon by a standards track document." Id. Accordingly, the evidence
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`provided by defendants concerning this specification contradicts defendants' claim that the
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`specification is "a well accepted industry standard."
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` Defendants indicate that an "HTTP server" must perform three bulleted items.
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`Defendants' Objections of September 8, 2006, at 16. Looking at the HTTP specification
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`provided by defendants, a "server" is defined as an "application program," not a device.
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`Hypertext Transfer Protocol -- HTTP/1.0 at Appendix B-21, Defendants' Responsive Brief of
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`June 23, 2006. Accordingly, defendants are attempting to prescribe alleged requirements of an
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`"application program" to a device. Defendants never identify any part of this specification that
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`provides any requirements for a device such as an HTTP-Compliant Device.
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`6
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 6
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 7 of 8 PageID #: 4583
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`VI. Conclusion
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`EpicRealm, therefore, asks the Court to adopt Magistrate Judge Craven's Report and
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`Recommendation for the terms "Web server", "page server", "concurrently processes",
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`"intercepting", "Web page," and "HTTP-compliant device."
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`Respectfully submitted,
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`/s/ Jeff Moles
`Larry D. Carlson, Attorney-in-Charge
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`Texas State Bar No. 03814500
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`E-Mail: larry.carlson@bakerbotts.com
`Kevin Meek
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`Texas State Bar No. 13899600
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`E-Mail: kevin.meek@bakerbotts.com
`Thomas Frame
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`Texas State Bar No. 24027318
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`E-Mail: thomas.frame@bakerbotts.com
`Jeff Moles
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`Texas State Bar No. 24041504
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`E-Mail: jeff.moles@bakerbotts.com
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, Texas 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
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`Otis W. Carroll
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`State Bar No. 03895700
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`E-Mail: otiscarroll@icklaw.com
`IRELAND, CARROLL & KELLEY, P.C.
`6101 S. Broadway, Suite 500
`P.O. Box 7879
`Tyler, Texas 75711
`Telephone: (903) 561-1600
`Facsimile: (903) 581-1071
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`7
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 7
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`Case 5:07-cv-00125-DF-CMC Document 236 Filed 10/10/06 Page 8 of 8 PageID #: 4584
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`S. Calvin Capshaw
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`State Bar No. 03783900
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`E-Mail: ccapshaw@mailbmc.com
`BROWN McCARROLL LLP
`1127 Judson Road, Suite 220
`P.O. Box 3999
`Longview, Texas 75601-5157
`Telephone: (903) 236-9800
`Facsimile: (903) 236-8787
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`
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`Franklin Jones, Jr.
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`State Bar No. 00000055
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`E-Mail: maizieh@millerfirm.com
`JONES & JONES, Inc., P.C.
`201 West Houston Street
`P.O. Drawer 1249
`Marshall, Texas 75671-1249
`Telephone: (903) 938-4395
`Facsimile: (903) 938-3360
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`T. John Ward, Jr.
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`State Bar No. 00794818
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`E-mail: jw@jwfirm.com
`Law Office of T. John Ward, Jr., P.C.
`P.O. Box 1231
`Longview, Texas 75606-1231
`Telephone (903) 757-6400
`Facsimile (903) 757-2323
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`ATTORNEYS FOR PLAINTIFF
`EPICREALM LICENSING, LP
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`CERTIFICATE OF SERVICE
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`I certify that on October 10, 2006, all counsel are being served with a copy of this
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`document either: (1) by the Court's Electronic Filing System, pursuant to Local Rule CV-
`5(a)(3)(A), if they have consented to electronic service, or (2) by electronic mail, pursuant to
`Local Rule CV-5(d), if they have not so consented.
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` /s/ Jeff Moles
`Jeff Moles
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`8
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`Microsoft v. Parallel Networks, IPR2015-00483 and IPR2015-00485
`Petitioner Microsoft Corporation - Ex. 1094, p. 8