Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 1 of 73 PageID #: 2331
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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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`v.
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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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`v.
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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 REPLY TO
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`DAL01:912960.1
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`1
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`Petitioner Microsoft Corporation - Ex. 1034, p. Cover
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 2 of 73 PageID #: 2332
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`
`I.
`II.
`III.
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`2.
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`3.
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`TABLE OF CONTENTS
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`INTRODUCTION................................................................................................................... 1
`LEGAL PRINCIPLES ............................................................................................................ 1
`THIS COURT SHOULD ADOPT EPICREALM’S PROPOSED CLAIM CONSTRUCTIONS ........ 2
`A.
`“dispatching”..........................................................................................................5
`B.
`“page server”........................................................................................................10
`C.
`“request”...............................................................................................................18
`D.
`“releasing” ............................................................................................................23
`E.
`“transferring”.......................................................................................................26
`F.
`“web page”............................................................................................................28
`G.
`“Web server”........................................................................................................32
`H.
`“HTTP-compliant device”...................................................................................38
`I.
`“said processing being performed by said page server while said Web
`server concurrently processes said other requests”..........................................42
`“intercepting”.......................................................................................................45
`J.
`K. Means-plus-function claims ................................................................................54
`1.
`Defendants Formulate an
`Incorrect Mean-Plus-Function
`Standard....................................................................................................56
`The Structure Corresponding to a Computer-Implemented
`Means-Plus-Function is the Algorithm ..................................................57
`Both Parties Recognize that the Claim Terms in Question are
`Means-Plus-Function Terms that are Computer-Implemented..........58
`Parties’ Identification of the Algorithm Structure ...............................59
`The Algorithms Corresponding to the Functions are Well-
`Known .......................................................................................................61
`Additional Deficiencies in Defendants’ Proposed Structures ..............62
`This Court Should Adopt epicRealm’s Constructions as the Only
`Constructions that Satisfies § 112...........................................................65
`IV. CONCLUSION .................................................................................................................... 66
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`
`4.
`5.
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`6.
`7.
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`DAL01:912960.1
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`i
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`Petitioner Microsoft Corporation - Ex. 1034, p. i
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 3 of 73 PageID #: 2333
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`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`
`
`
`Atmel Corp. v. Information Storage Devices,
`198 F.3d 1374, 1380 (Fed. Cir. 1999)................................................................................55
`
`
`Braun Med., Inc. v. Abbot Labs,
`124 F.3d 1419, 1424 (Fed. Cir. 1997) .........................................................................55, 56
`
`
`Brookhill-Wilk v. Intuitive Surgical,
`
` 334 F.3d 1294. 1301 (Fed. Cir. 2003)...............................................................1, 11, 12, 15
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`
`296 F.3d 1106, 1113 (Fed. Cir. 2002)................................................................................55
`
`CollegeNet, Inc. v. ApplyYourself, Inc.,
`
`418 F.3d 1225, 1231 (Fed. Cir. 2005)................................................................................41
`
`Embrex, Inc. v. Service Eng’g Corp.,
`
`216 F.3d 1343, 1347 (Fed. Cir. 2000) .................................................................................3
`
`Harris Corp. v. Ericsson, Inc.,
`417 F.3d 1241 (Fed. Cir. 2005)........................................................................54, 57, 58, 59
`
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
` 222 F.3d 951 (Fed. Cir. 2000) ....................................................................................35, 36
`
`
`In re Dossel,
`115 F.3d 942 (Fed. Cir. 1997)................................................................................54, 55, 56
`36, 43, 49, 52
`
`
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`381 F.3d 1111 (Fed. Cir. 2004)..........................................................................................38
`
`
`Intel Corp. v. Via Technologies, Inc.,
`319 F.3d 1357 (Fed. Cir. 2003)....................................................................................56, 60
`43, 49, 52
`
`Johnson Worldwide Assocs., Inc. v. Zebco Corp.,
`175 F.3d 985, 989 (Fed. Cir. 1999)......................................................................................3
`
`
`Linear Technology Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004)..........................................................................................43
`
`
`
`
`DAL01:912960.1
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`ii
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`Petitioner Microsoft Corporation - Ex. 1034, p. ii
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 4 of 73 PageID #: 2334
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`Medical Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F.3d 1205, 1212 (Fed. Cir. 2003)..........................................................................57, 59
`
`
`
`Mobility Electronics, Inc. v. Formosa Electronics Industries, Inc.,
`No. 5:04-cv-00103-DF (E.D. Tex. __ , February 24, 2006)................................................4
`
`
`Noelle v. Lederman,
`335 F. 3d 1343 (Fed. Cir. 2004) ........................................................................................40
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..... 1-4, 17, 19, 24, 26, 29-30, 32, 35-37, 39, 41, 43, 49, 55
`
`Renishaw PLC v. Marposs Societa’ Per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ...................................................................................35, 36
`
`
`SanDisk Corp. v. Memorex Products, Inc.,
`415 F.3d 1278, 1285 (Fed. Cir. 2005)..................................................................5, 8, 32, 43
`
`
`Tivo v. Echostar Communications Corp.,
`No. 2:04-CV-1-DF (E.D. Tex. __________).....................................................................43
`
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................6, 8, 19
`
`
`WMS Gaming, Inc. v. Int'l Game Technology,
`184 F.3d 1339 (Fed. Cir. 1999)....................................................................................57, 58
`
`
`
`iii
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`
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`DAL01:912960.1
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`Petitioner Microsoft Corporation - Ex. 1034, p. iii
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 5 of 73 PageID #: 2335
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`35 U.S.C. § 112..........................................................................................39, 40, 54, 55, 59, 60, 64
`35 U.S.C. § 282..................................................................................................................17, 39, 50
`
`FEDERAL STATUTES
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`
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`DAL01:912960.1
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`iv
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`Petitioner Microsoft Corporation - Ex. 1034, p. iv
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 6 of 73 PageID #: 2336
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`I.
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`INTRODUCTION
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`Pursuant to the Agreed Docket Control Order signed on January 13, 2006, plaintiff
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`epicRealm Licensing, LP (“epicRealm”) submits this reply to Defendants’ Responsive Claim
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`Construction Brief (“Defendants’ Brief”) for disputed terms or phrases in United States Patent
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`Nos. 5,894,554 and 6,415,335 (collectively the “epicRealm Patents” and singularly the “’554
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`patent” and the “’335 Patent”).
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`LEGAL PRINCIPLES
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`In epicRealm’s Opening Claim Construction Brief (“Opening Brief”) numerous claim
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`II.
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`construction principles were provided. The principles discussed below supplement and reinforce
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`those principles.
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`In looking at the specification for guidance in claim construction, a specific danger
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`recognized by the Federal Circuit is an impermissible reading of limitations from the
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`specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005).
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`In this regard, the Federal Circuit recognizes that “although the specification often describes very
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`specific embodiments of the invention, we have repeatedly warned against confining the claims
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`to those embodiments.” Id. at 1323 (Emphasis added). This even holds true if only one
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`embodiment is disclosed. Id. at 1323. As an additional instruction in this regard, the Federal
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`Circuit has indicated that “[a]bsent a clear disclaimer of particular subject matter, the fact that the
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`inventor anticipated that the invention may be used in a particular manner does not limit the
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`scope to that narrow context.” Brookhill-Wilk v. Intuitive Surgical, 334 F.3d 1294. 1301 (Fed.
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`Cir. 2003).
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`
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`With regards to the prosecution history of a patent, the Federal Circuit has recognized
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`that because “the prosecution history represents an ongoing negotiation between the Patent
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`DAL01:912960.1
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`1
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`Petitioner Microsoft Corporation - Ex. 1034, p. 1
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 7 of 73 PageID #: 2337
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`Office and the applicant, rather than the final product of that negotiation, it often lacks the clarity
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`of the specification and thus is less useful for claim construction purposes.” Phillips at 1317.
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`
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`With regards to extrinsic evidence, the Federal Circuit has indicated that “[w]e 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)
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`
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`Ultimately, “[t]he construction that stays true to the claim language and most naturally
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`aligns with the patent’s description of the invention will be, in the end, the correct construction.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Thus, it is not permissible to focus
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`on only a portion of the specification and ignore other parts, rather, “[t]he court must always read
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`the claims in view of the full specification.” SanDisk Corp. v. Memorex Products, Inc. 415 F.3d
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`1278, 1285 (Fed. Cir. 2005). Additionally, “[a] claim construction that excludes a preferred
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`embodiment . . . is ‘rarely, if ever, correct.’” (citations omitted) SanDisk Corp., 415 F.3d at 1285.
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`
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`With regards to an interplay between claim construction and a validity analysis, the
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`Federal Circuit has indicated that “[w]hile we have acknowledged the maxim that claims should
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`be construed to preserve their validity, we have not applied that principle broadly, and we have
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`certainly not endorsed a regime in which validity analysis is a regular component of claim
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`construction. (citations omitted). Instead, we have limited the maxim to cases in which ‘the court
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`concludes, after applying all the available tools of claim construction, that the claim is still
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`ambiguous.’” (citations omitted) Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005).
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`III. THIS COURT SHOULD ADOPT EPICREALM’S PROPOSED CLAIM CONSTRUCTIONS
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`This Court should adopt epicRealm’s proposed constructions because epicRealm’s
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`constructions are consistent with principles stated in Phillips: “The construction that stays true to
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`DAL01:912960.1
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`2
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`Petitioner Microsoft Corporation - Ex. 1034, p. 2
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`

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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 8 of 73 PageID #: 2338
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`the claim language and most naturally aligns with the patent’s description of the invention will
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`be, in the end, the correct construction.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
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`2005) (en banc).
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`As outlined below, this can be contrasted with Defendants’ proposed constructions,
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`which are not only in conflict with the intrinsic evidence, but also clearly violate established
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`claim construction tenets. To this end, the Federal Circuit has made it clear that claim
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`construction is not meant to change the scope of the claims, but only to clarify their meaning.
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`Embrex, Inc. v. Service Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (“The construction of
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`claims is simply a way of elaborating the normally terse claim language[] in order to understand
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`and explain, but not to change, the scope of the claims.”) Further, there is a “heavy presumption”
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`in favor of construing claim language as it would be plainly understood by one of ordinary skill
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`in the art. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999).
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`Rather than complying with these principles, Defendants have chosen to veil arguments in their
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`proposed constructions in hopes that one of these will pass through unnoticed, allowing them to
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`support a future non-infringement position.
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`Notably, taking a stance that, at best, can be deemed ironic, Defendants suggest that
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`epicRealm violates claim construction principles. See Defendants’ Brief, Page 1. However, upon
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`a close review of Defendants’ Brief, this Court will find that the Defendants – not epicRealm –
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`repeatedly violate claim construction principles. Examples of Defendants’ repeated violations of
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`claim construction principles include, but are not limited to:
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`• Reading unnecessary extra limitations into the claims, not only from the
`specification, but also from other non-intrinsic evidence;
`• Looking at litigation-inspired extrinsic evidence in an attempt to contradict the
`plain and ordinary meaning of terms;
`• Mischaracterizing
`then attempting
`intrinsic evidence and
`mischaracterization to support their construction;
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`to use
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`that
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`DAL01:912960.1
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`3
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`Petitioner Microsoft Corporation - Ex. 1034, p. 3
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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 9 of 73 PageID #: 2339
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`• Citing and using an erroneous “purpose of the invention” principle as a license to
`violate fundamental claim construction principles;
`• Suggesting extra verbiage in claim language to achieve specific “advantages” or
`“objects” of the invention;
`• Surgically focusing on only selected portions of the specification as opposed to
`viewing the specification as a whole;
`• Suggesting constructions that read out preferred embodiments of the invention;
`• Using alleged prosecution disclaimers where none exist; and
`• Attempting to limit the claims to particular embodiments.
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`Additionally, Defendants do not heed statements provided by this Court in summarizing
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`
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`principles from Phillips about extrinsic evidence:
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`“In pointing out the less reliable nature of extrinsic evidence, the court reasoned
`that such evidence (1) is by definition not part of the patent, (2) does not
`necessarily reflect the views or understanding of a person of ordinary skill in the
`relevant art, (3) is often produced specifically for litigation, (4) is far reaching to
`the extent that it may encompass several views, and (5) may distort the true
`meaning intended by the inventor.”
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`
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`(Claim Construction Order, Mobility Electronics, Inc. v. Formosa Electronics Industries, Inc.,
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`No. 5:04-cv-00103-DF (E.D. Tex. __ , February 24, 2006) (attached as Appendix A.) Notably,
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`for almost every term, Defendants choose to look to extrinsic evidence convenient to their
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`purpose. In doing so, they put blinders on and look only at the portion of the extrinsic evidence
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`that supports their purpose. For example, where there are multiple discussions of a term in a
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`particular reference, they choose to ignore the discussion which would counter their definition.
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`Also, where there are multiple definitions by the same reference, they choose to ignore the other
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`definitions. In citing extrinsic evidence in this brief, epicRealm only looks to extrinsic evidence
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`cited by Defendants.
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`Furthermore, in the Technology Background section of Defendants’ Brief, Defendants
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`mischaracterize the epicRealm Patents. Specifically, Defendants submit arguments concerning
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`what they allege is taught by the epicRealm patents. Because the majority of these
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`DAL01:912960.1
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`4
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`Petitioner Microsoft Corporation - Ex. 1034, p. 4
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`mischaracterizations are also discussed in Defendants’ Brief with respect to a particular term or
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`phrase, epicRealm will address such mischaracterizations in the below briefing where they are
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`used as an alleged support for Defendants’ position.
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`As indicated in Defendants’ Brief, new constructions were presented by Defendants for
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`four of the contested terms or phrases. Defendants’ Brief, Page 1. As all of these modifications
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`were not clearly identified in Defendants’ Brief, to assist this Court during review of the parties’
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`briefs, epicRealm has provided the old and new definitions for the terms or phrase modified by
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`Defendants.
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`A.
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`“dispatching”
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`epicRealm’s Proposed Construction
`selecting a page server for processing a request,
`based on current state information maintained about
`page servers, and sending the request to the selected
`page server
`
`Defendant’s Proposed Construction
`analyzing a request to make an informed selection based
`on dynamic information about page servers of which
`page server should process the request, and sending the
`request to the selected page server
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`This Court should construe “dispatching” as “selecting a page server for processing a
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`request, based on current state information maintained about page servers, and sending the
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`request to the selected page server.” As outlined in epicRealm’s Opening Brief, this construction
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`is entirely consistent with the specification as a whole. Specifically, in epicRealm’s Opening
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`Brief, epicRealm provided examples of how a dispatcher selects a page server based on the state
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`of such page servers.
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`In contrast, Defendants propose a construction that is not only inconsistent with
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`specification, but is also ambiguous on its face. Indeed, this Court can quickly reject Defendants’
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`construction because of such ambiguity. If the Defendants’ proposed construction is adopted,
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`there will be an unfortunate future need to ascertain the meaning of their construction.
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`DAL01:912960.1
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`5
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`Petitioner Microsoft Corporation - Ex. 1034, p. 5
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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 11 of 73 PageID #: 2341
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`Defendants’ proposed construction is ambiguous because of their use of the prepositional
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`phrase “of which pager server should process the request.” What does this prepositional phrase
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`modify? Under one interpretation, the prepositional phrase modifies “informed selection.” Under
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`another interpretation, the prepositional phrase modifies “dynamic information about page
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`servers.”1 The meaning of Defendants’ construction changes dramatically, depending on which
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`term the prepositional phrase modifies.
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`To ascertain a meaning of Defendants’ construction, one could look to basic grammar
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`rules, which indicate that the closest term to the modifier is the term being modified. Under this
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`principle, the prepositional phrase would modify “dynamic information about pagers servers.”
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`With this construction, an informed selection is thus based on “dynamic information about
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`pagers servers of which pager server should process the request.” The inquiry, however, does not
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`stop here. The meaning of “dynamic information about pagers servers of which pager server
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`should process the request” is not apparent. One reasonable interpretation of Defendants’
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`construction is that a dispatcher does not actually make a selection of a page server. Rather,
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`according to the reasonable interpretation of Defendants’ construction, the page server that
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`should process the request is provided to the dispatcher. If this, indeed, is the meaning of
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`Defendants’ phrase, preferred embodiments (in which the dispatcher selects a page serer) would
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`be read out of the claims, violating a principle tenet of claim construction. Vitronics Corp. v.
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`Conceptronics, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996). (Interpretations that read out
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`preferred embodiments are “rarely, if ever, correct”).
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`Further, in a side-by-side comparison, one can see how epicRealm’s construction is
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`consistent with the specification whereas Defendants’ construction is not. Specifically, the
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`1 Under a third interpretation, the prepositional phrase could modify “page servers.”
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`DAL01:912960.1
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`6
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`Petitioner Microsoft Corporation - Ex. 1034, p. 6
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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 12 of 73 PageID #: 2342
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`following table represents each parties’ proposed construction broken down into three rows of
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`component parts:
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`
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`epicRealm’s Proposed Construction
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`Defendant’s Proposed Construction
`
`1 selecting a page server for processing a
`request,
`2 based on current state information
`maintained about page servers,
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`3 and sending the request to the selected
`page server
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`analyzing a request to make an informed
`selection
`based on dynamic information about page
`servers of which page server should
`process the request,
`and sending the request to the selected
`page server
`
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`The parties are not in dispute as to the components in Row 3. Accordingly, this Court can focus
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`on the components in Row 2 and 3.
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`Row 2
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`To support constructions in Row 2, both parties initially point to the following language
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`in the specification (epicRealm’s Opening Brief, page 9; Defendants’ Brief, page 40):
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`“Dispatcher 402 maintains a variety of information regarding each Page server
`on the network, and dispatches requests based on this information.” Col. 5, ll.
`51-53
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`From the above passage, one can see that information is maintained regarding each Page server.
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`epicRealm’s proposed construction includes language consistent with this in Row 2. Defendants’
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`proposed language in Row 2 does not as it does not specify the maintenance of such information.
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`Given the language about a “variety of information,” both parties next move to further
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`language in the specification to determine the type of information. The Defendants’ choose to
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`look at only one small passage in the specification, taken out of context (Defendants’ Brief, page
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`40), whereas epicRealm’s looks at the multiple examples of dispatching given in the
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`specification (epicRealm’s Opening Brief, pages 9 and 10).
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`DAL01:912960.1
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`7
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`Petitioner Microsoft Corporation - Ex. 1034, p. 7
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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 13 of 73 PageID #: 2343
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`Specifically, Defendants only look at the following language: “Dispatcher 402 retains
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`dynamic information regarding the data sources that any given Page server can access.” Col. 5,
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`ll. 54-56. Then, Defendants excise the “dynamic information” portion of this language and tag on
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`“about page servers of which page server should process the request.” Although “dynamic
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`information about page servers of which page server should process the request” is ambiguous,
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`one of ordinary skill in the art could interpret this as a dispatcher being given instructions on
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`where to send a request. In other words, one could interpret Defendants’ construction as a
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`scenario in which the dispatcher does not select a page server. The specification makes clear that
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`the appropriate page server is selected by the dispatcher. See e.g., Col. 5, ll. 51- Col. 6, ll. 19.
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`Accordingly, if the Defendants’ construction is adopted, preferred embodiments would be read
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`out of the claims, violating a principle tenet of claim construction. Vitronics Corp. v.
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`Conceptronics, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996). Additionally, in only looking at a
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`small portion of the specification, Defendants impermissibly choose to not read the specification
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`as a whole, violating another principle tenet of claim construction. SanDisk Corp. v. Memorex
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`Products, Inc. 415 F.3d 1278, 1285 (Fed. Cir. 2005).
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`
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`In comparison, epicRealm looks at the entire specification, including all examples of
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`dispatching, to determine types of information maintained to engage in dispatching. From these
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`examples, it is clear that dispatching is based on current state information maintained about page
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`servers – that is, in the cited examples, (a) whether the page servers have access to requisite data,
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`(b) whether the page servers have a page cache corresponding to a request and/or (c) the number
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`or requests each page server is servicing.
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`8
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`DAL01:912960.1
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`Petitioner Microsoft Corporation - Ex. 1034, p. 8
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`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 14 of 73 PageID #: 2344
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`Row 1
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`Looking at the terms in Row 1, epicRealm proposes an analog to Row 3 - that is,
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`“selecting a page server for processing a request” and “sending the request to the selected page
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`server.” Contrary to this, Defendants propose “analyzing a request to make an informed
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`selection.” The term “analyzing” is not contained in the specification. Accordingly, it is unclear
`
`whether “selecting” is separate from or a part of “analyzing.” Therefore, Defendants introduce
`
`additional ambiguities with Defendants’ proposal for Row 1.
`
`
`
`Additionally, further ambiguity is raised by the fact that “dynamic information about
`
`page servers of which page server should process the request” suggests that the dispatcher does
`
`not engage in selection. Accordingly, it is unclear from Defendants’ proposed construction as to
`
`whether or not the dispatcher engages in selecting.
`
`
`
`Therefore, looking at side-by-side comparison, it is clear that epicRealm’s construction is
`
`consistent with the specification whereas the Defendants’ construction is not.
`
`
`
`This Court can and should adopt epicRealm’s construction and reject Defendants for any
`
`of the following reasons: (1) because Defendants’ construction has multiple ambiguities, which
`
`would require further analysis to clarify the meaning of Defendants’ construction; (2) because
`
`reasonable interpretations of Defendants’ construction impermissibly read out preferred
`
`embodiments of the invention; and (3) because a side-by-side comparison reveals how
`
`epicRealm’s construction is consistent with the specification and how Defendants’ construction
`
`is not consistent with the specification.
`
`For all the above reasons, this Court should adopt epicRealm’s construction of
`
`“dispatching” – a construction that is entirely consistent with the intrinsic evidence, including the
`
`specification as a whole.
`
`DAL01:912960.1
`
`9
`
`Petitioner Microsoft Corporation - Ex. 1034, p. 9
`
`

`
`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 15 of 73 PageID #: 2345
`
`
`B.
`
`“page server”
`
`epicRealm’s Proposed Construction
`a processing system operable to receive a request and
`dynamically generate content in response to the
`request
`
`Defendant’s Proposed Construction
`OLD: a machine running page server software, distinct
`from the Web server machine, that generates a dynamic
`Web page
`NEW: page-generating software that generates a dynamic
`Web page on a machine separate from the Web server
`machine.
`This Court should construe “page server” as “ a processing system operable to receive a
`
`
`
`
`
`request and dynamically generate content in response to the request.” As outlined in epicRealm’s
`
`Opening Brief, this construction is entirely consistent with the specification. In contrast,
`
`Defendants propose a construction that is not only inconsistent with specification, but is also
`
`based upon a claim construction ‘principle’ they conveniently create to support their position but
`
`which, in fact, directly contradicts established claim construction tenets.
`
`
`
`In choosing to adopt epicRealm’s construction and reject Defendants’ construction, this
`
`Court can look to epicRealm’s Opening Brief (identifying how epicRealm’s construction is
`
`consistent with the intrinsic evidence) and any of the following reasons.
`
`
`
`Defendants’ propose importing into the claims extra limitations that are neither
`
`necessitated by the claims nor required by the specification. In their new construction,
`
`Defendants’ concede that a page server can be software (as opposed to their previous
`
`requirement that it must be “a machine”). However, they still choose to add unnecessary extra
`
`verbiage in their construction, namely by indicating that this software must be “on a machine
`
`separate from the Web server machine.”
`
`
`
`Because this extra verbiage is neither necessitated by the claims nor necessitated by the
`
`specification, Defendants, in violation of established claim construction tenets, create a claim
`
`construction principle premised on the idea that the extra verbiage is needed because
`
`Defendants’ allege the added limitations are “essential to the claimed invention.” Defendants’
`
`DAL01:912960.1
`
`10
`
`Petitioner Microsoft Corporation - Ex. 1034, p. 10
`
`

`
`Case 5:07-cv-00125-DF-CMC Document 176 Filed 07/07/06 Page 16 of 73 PageID #: 2346
`
`
`Brief, Page 24. In fact, these extra limitations regarding particular “machinery” are not required
`
`by the specification. Thus, by introducing this newly created claim construction principle, the
`
`Defendants’ fully ignore other well-established claim construction principles. The Federal
`
`Circuit has never accepted the so-called ‘principle’ proposed by the Defendants. Neither should
`
`this Court.
`
`
`
`Rather, the Federal Circuit has explicitly rejected a similar proposal: the idea that an
`
`advantage or object of the invention must be read into claims. The case of Brookhill-Wilk v.
`
`Intuitive Surgical, 334 F.3d 1294 (Fed. Cir. 2003) is instructive in this regard. In that case, the
`
`Federal Circuit was faced with the construction of the term “remote location” in the context of a
`
`surgeon operating with an instrument on a patient. The patentee argued that “remote” could
`
`mean in the same room as the patient and the alleged infringer argued that “remote” must mean
`
`in a different room than the patient. The court indicated that “[t]he written description states the
`
`advantage of the invention in this context, and the description of the preferred embodiment
`
`contemplates a surgeon located outside of the operating room.” However, despite this, the court
`
`concluded “remote location” encompasses a surgeon being in the same room as the patient,
`
`indicating:
`
`No statement in the written description, however, constitutes a limitation on the
`scope of the invention. The objective described is merely one of several
`objectives that can be achieved through the use of the invention; the written
`description does not suggest that the invention must be used only in a manner to
`attain that objective. “Advantages described in the body of the specification, if not
`included in the claims, are not per se limitations to the claimed invention”
`(Citations omitted) . . . .
`
`The Background merely states the apparent—that traditional surgery is performed
`by direct manipulation of surgical instruments on patients within the operating
`room. Stating that the surgeon would always be in the operating room when
`performing traditional surgery does not foreclose the presence of the surgeon
`within the operating room when performing remote su