Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 1 of 203 PageID 11950
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`WICHITA FALLS DIVISION
`
`CIVIL ACTION NO. 7:14-cv-00014-O
`
`JURY TRIAL DEMANDED
`
`CIVIL ACTION NO. 7:14-cv-00106-O
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§§§§§§§§§
`
`§§§§§§§§§§§
`
`SUMMIT 6 LLC,
`
`Plaintiff,
`
`
`
`v.
`
`HTC CORPORATION,
`HTC AMERICA, INC.,
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC.,
`LG ELECTRONICS MOBILECOMM
`USA, INC.,
`MOTOROLA MOBILITY LLC, and
`TWITTER INC.,
`
`Defendants.
`
`SUMMIT 6 LLC,
`
`Plaintiff,
`
`
`
`v.
`
`APPLE INC.
`
`Defendant.
`
`AMENDED JOINT CLAIM CONSTRUCTION AND PREHEARING
`STATEMENT
`
`
`
`
`
`
`
`
`
`TO THE HONORABLE COURT:
`
`Since filing the Joint Claim Construction Statement, (Dkt. No. 149), the parties
`
`have both reduced the number of asserted claims and dropped certain claim terms for
`
`construction. As a result, Plaintiff Summit 6 LLC (“Summit 6”) and Defendants HTC
`
`Apple/Twitter
`Ex. 1027
`IPR1 of U.S. Pat. No. 7,765,482
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 2 of 203 PageID 11951
`
`Corporation, HTC America, Inc., LG Electronics, Inc., LG Electronics USA, Inc., LG
`
`Electronics MobileComm USA, Inc., Motorola Mobility LLC, Apple Inc., and Twitter
`
`Inc. (collectively “Defendants”) file this Amended Joint Claim Construction and
`
`Prehearing Statement to address those changes.
`
`I. Terms Proposed for Construction on Which the Parties Agree
`
`The parties agree on the construction of the following claim terms:
`
`Claim Term or Phrase and Relevant
`Claims
`pre-processing parameters
`’482: Claims 1, 12, 13, 16, 17, 18, 22, 25,
`35, 37, 38, 51
`
`ʼ515: Claims 1, 7, 20-23, 39-41, 52
`displaying a preview image of said
`selected digital content
`
`ʼ482: Claim 35
`displaying a thumbnail preview of said
`identified . . . files
`
`ʼ515: Claims 6, 28
`displaying thumbnail previews of . . .
`files
`
`ʼ515: Claims 53
`publishing/publication
`
`ʼ482: Claims 1, 13, 22, 35, 38, 51
`third party website
`
`ʼ557: Claims 28, 35, 36
`
`Agreed Construction
`
`values directing the pre-processing
`
`displaying a preview image of the digital
`content after the digital content has been
`selected
`
`displaying a thumbnail preview of the file(s)
`after the file(s) have been identified
`
`displaying thumbnail previews of the files
`after the files have been identified
`
`making publicly available/the act of making
`publicly available
`
`a website being operated by a party other
`than: (1) the user, or (2) the party which
`provided the operator of the website with
`the code used to include the media object
`identifier on the website
`modifying the digital content data to meet
`certain specifications
`
`2
`
`placement of . . . digital content into a
`specified form
`
`to place . . . digital content in a specified
`form
`
`ʼ482: Claims 1, 13, 22, 35, 37, 38, 51
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 3 of 203 PageID 11952
`
`information related to a person that enables
`identification of that person
`
`information that enables identification of
`a user
`
`user identifier
`
`information associated with an individual
`
`information retrieved by said client
`device that enables identification of a
`user
`
`’482: Claims 13, 19, 25, 37
`
`
`
`user information
`
`ʼ482: Claim 49
`
`II. Each Party’s Proposed Claim Constructions and Supporting Evidence
`
`information related to a person
`
`A side-by-side comparison of the parties’ respective proposed constructions, an
`
`identification of the party/parties proposing the construction, and an identification of the
`
`intrinsic and extrinsic evidence that they intend to rely upon, either to support their
`
`proposed construction of the claim terms or to oppose another party’s proposed
`
`construction, are provided in Exhibit A. The ’557, ’482, and ʼ515 patents share a largely
`
`identical written description; therefore citations made to one of the patents are intended to
`
`refer to the corresponding portions from all patents-in-suit. The parties also reserve the
`
`right to rely on evidence cited by the opposing party to support or oppose particular
`
`constructions as appropriate.
`
`In addition to the extrinsic evidence identified in Exhibit A, the parties anticipate
`
`that they may rely also on Markman briefing and the Court’s Markman Order from the
`
`previous Summit 6 case (3:11-cv-00367), as well as any potential future Federal Circuit
`
`ruling(s) of matters on appeal in the previous Summit 6 case. With respect to expert
`
`3
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 4 of 203 PageID 11953
`
`testimony, the parties were able to agree on its use. Expert declarations were submitted
`
`with the parties’ briefing.
`
`III. Length of Claim Construction Hearing
`
`Should the Court find a hearing beneficial, the parties anticipate that three hours
`
`will be sufficient with this time to be divided equally between the two sides.
`
`IV. Witness and/or Expert Testimony
`
`None of the parties intend to call any witnesses at the claim construction hearing.
`
`V. Issues for the Pre-Hearing Conference
`
`The parties do not currently have any issues that need to be taken up with the
`
`Court at a pre-hearing conference.
`
`Dated: January 27, 2015.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`MCKOOL SMITH P.C.
`
`By: /s/ Douglas A. Cawley
`Douglas A. Cawley
`Lead Attorney
`Texas State Bar No. 04035500
`dcawley@mckoolsmith.com
`Theodore Stevenson III
`Texas State Bar No. 19196650
`tstevenson@mckoolsmith.com
`Phillip M. Aurentz
`Texas State Bar No. 24059404
`paurentz@mckoolsmith.com
`Ashley N. Moore
`Texas State Bar No. 24074748
`amoore@mckoolsmith.com
`Mitchell R. Sibley
`Texas State Bar No. 24073097
`msibley@mckoolsmith.com
`Richard A. Kamprath
`
`4
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 5 of 203 PageID 11954
`
`Texas State Bar No. 24078767
`rkamprath@mckoolsmith.com
`Cory McAnelly (Pro Hac Vice)
`Iowa State Bar No. 28601
`cmcanelly@mckoolsmith.com
`Colleen Bloss
`Texas State Bar No. 24082160
`cbloss@Mckoolsmith.com
`McKool Smith, P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4044
`
`Bradley W. Caldwell
`Texas State Bar No. 24040630
`bcaldwell@caldwellcc.com
`Caldwell Cassady & Curry
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`Telephone: (214) 888-4848
`Telecopier: (214) 888-4849
`
`ATTORNEYS FOR PLAINTIFF
`SUMMIT 6 LLC
`
`
`5
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 6 of 203 PageID 11955
`
`/s/ Mark D. Selwyn
`Mark D. Selwyn (pro hac vice)
`Jason Kipnis (pro hac vice)
`Katherine D. Prescott (pro hac vice)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 858-6000
`Facsimile: (650) 858-6100
`mark.selwyn@wilmerhale.com
`jason.kipnis@wilmerhale.com
`katherine.prescott@wilmerhale.com
`
`Kevin S. Prussia (pro hac vice)
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`Telephone: (617) 526-6000
`Facsimile: (617) 526-5000
`kevin.prussia@wilmerhale.com
`
`Russell Emerson
`HAYNES & BOONE
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`Telephone: (214) 651-5328
`Facsimile: (214) 200-0884
`russ.emerson@haynesboone.com
`
`Attorneys for Defendant APPLE INC.
`
`/s/ Robert M. Isackson
`Deborah L. Sterling
`Texas Bar No. 19170950
`QUILLING SELANDER LOWNDS
` WINSLETT & MOSER, P.C.
`2001 Bryan Street, Suite 1800
`Dallas, Texas 75201
`Telephone: 214-871-2111
`Facsimile: 214-871-2111
`dsterling@qslwm.com
`
`Steven J. Routh (admitted pro hac vice)
`ORRICK HERRINGTON & SUTCLIFFE LLP
`Columbia Center
`1152 15th Street, N.W.
`Washington, D.C. 20005-1706
`Tel.: (202) 339-8400
`Fax: (202) 339-8500
`
`Robert M. Isackson (admitted pro hac vice)
`ORRICK HERRINGTON & SUTCLIFFE LLP
`666 Fifth Avenue
`New York, NY 10103-0001
`Tel.: (212) 506-5000
`Fax: (212) 506-5151
`
`Stacey E. Stillman (admitted pro hac vice)
`ORRICK HERRINGTON & SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Tel: (650) 614-7400
`Fax: (650) 614-7401
`
`
`Hsiwen Lo (admitted pro hac vice)
`ORRICK HERRINGTON & SUTCLIFFE LLP
`2050 Main Street
`Suite 1100
`Irvine, CA 92614-8255
`Tel: (949) 567-6700
`Fax: (949) 567-6710
`
`
`Attorneys for Defendants LG
`ELECTRONICS, INC., LGE
`ELECTRONICS USA, INC., AND LG
`ELECTRONICS MOBILECOMM USA,
`INC.
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`6
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 7 of 203 PageID 11956
`
`/s/ Philip Ou
`Yar R. Chaikovsky (admitted)
`Bryan K. James (pro hac vice)
`Philip Ou (pro hac vice)
`MCDERMOTT WILL & EMERY LLP
`275 Middlefield Road, Suite 100
`Menlo Park, California 94025-4004
`Telephone: +1 650 815 7400
`Facsimile: +1 650 815 7401
`Email: mrassam@mwe.com
`Email: bjames@mwe.com
`Email: pou@mwe.com
`
`
`
`E. Leon Carter (Texas Bar No. 03914300)
`Linda R. Stahl (Texas Bar No. 00798525)
`CARTER SCHOLER ARNETT HAMADA &
`MOCKLER, PLLC
`Campbell Centre II
`8150 N. Central Expressway, 5th Floor
`Dallas, Texas 75206
`Telephone: +1 214 550 8160
`Facsimile: +1 214 550 8185
`Email: lcarter@carterscholer.com
`
`Attorneys for Defendants
`HTC CORPORATION and HTC
`AMERICA, INC.
`
`
`
`/s/ Bonnie M. Grant
`Steven D. Moore (pro hac vice)
`smoore@kilpatricktownsend.com
`KILPATRICK TOWNSEND LLP
`Eighth Floor
`Two Embarcadero Center
`San Francisco, CA 94111
`(415) 576.0200 (telephone)
`(415) 576.0300 (facsimile)
`
`D. Clay Holloway (pro hac vice)
`dholloway@kilpatricktownsend.com
`Bonnie M. Grant (Tex. Bar No. 24067634)
`bgrant@kilpatricktownsend.com
`Akarsh P. Belagodu (pro hac vice)
`abelagodu@kilpatricktownsend.com
`Shayne E. O’Reilly (pro hac vice)
`soreilly@kilpatricktownsend.com
`KILPATRICK TOWNSEND LLP
`Suite 2800
`1100 Peachtree Street
`Atlanta, Georgia 30309-4530
`(404) 815-6500 (Telephone)
`(404) 815-6555 (Facsimile)
`
`GRUBER HURST JOHANSEN HAIL
`SHANK
`MICHAEL K. HURST (Bar No. 10316310)
`mhurst@ghjhlaw.com
`JOSHUA M. SANDLER (Bar No. 24053680)
`jsandler@ghjhlaw.com
`1445 Ross Avenue
`Suite 2500
`Dallas, Texas 75202
`Telephone: 214 855 6800
`Facsimile: 214 855 6808
`
`Attorneys for Defendant MOTOROLA
`MOBILITY LLC
`
`
`
`7
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 8 of 203 PageID 11957
`
`/s/ Leo L. Lam
`David J. Silbert Pro Hac Vice
`Leo L. Lam Pro Hac Vice
`Julie A. Duncan Pro Hac Vice
`KEKER & VAN NEST LLP
`633 Battery Street
`San Francisco, CA 94111-1809
`Telephone: 415 391 5400
`Facsimile: 415 397 7188
`dsilbert@kvn.com
`llam@kvn.com
`jduncan@kvn.com
`
`Brett C. Govett
`FULBRIGHT & JAWORSKI
`2200 Ross Ave., Suite 2800
`Dallas, TX 75201-2784
`Telephone: 214.855.8118
`Facsimile: 214.855.8200
`brett.govett@nortonrosefulbright.com
`
`Attorneys for Defendant TWITTER, INC.
`
`
`
`8
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 9 of 203 PageID 11958
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that counsel of record for all parties to this
`action have been served with a true and correct copy of the foregoing by email.
`
`
`
`
`
`
`
`/s/ Ashley Moore
`Ashley Moore
`
`
`
`9
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 10 of 203 PageID 11959
`Case 7:14—cv—00014—O Document 232 Filed 01/27/15 Page 10 of 203 Page|D 11959
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`10
`10
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`JOINT CLAl1VI CONSTRUCTION AND PREHEARING STATEMENT
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 11 of 203 PageID 11960
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`1. pre-processing
`
`
`’557: Claims 28-29, 34
`
`’482: Claims 1, 6, 10, 12–14,
`16–18, 23, 25, 35, 38, 41–42
`
`ʼ515: Claims 1, 7, 10, 11, 20–
`23, 29, 30, 39–41, 52
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`modifying the [media object data/digital content
`data/one or more image files, video files, or audio
`files], as opposed to data merely associated with the
`[media object/digital content/image files, video files,
`audio files], at the client or local device in preparation
`for transmission to a remote device1
`
`Intrinsic support:
`’557 Patent: 2:11-15; 2:58-64; 4:58-60; 4:65-5:20;
`5:42-46; Figs. 3, 4A, 4B; Appendix A; ʼ557 claims 1,
`2, 7, 8, 13, 15, 16, 26, 28, 29, 31, 32, 37, 38, 45, 54,
`55, 69, 70; ʼ482 claims 1, 6, 7, 10-18, 23-26, 35-39,
`41-43, 51; ʼ515 claims: 1, 7, 9, 10-14, 20-24, 29-33,
`39-41, 50, 52.2
`
`2:11-15: “Even more importantly, the submission tool
`is configurable to perform a variable amount of
`intelligent preprocessing on media objects prior to
`upload. In the case of digital images, the tool can
`perform sizing and formatting, for example.”
`
`2:58-64: “The benefits of the Prepare and Post tool
`
`Proposed Construction
`
`modification before further processing/modifying
`before further processing
`
`OR
`
`modifying the [media object data/digital content
`data/one or more image files, video files, or audio
`files], as opposed to data merely associated with the
`[media object/digital content/image files, video files,
`audio files], at the client or local [device] (sic) prior to
`transmission to a remote device.3
`
`Written Description
`
`’557 Patent at Abstract: “The submission tool is
`configurable to perform a variable amount of
`intelligent preprocessing on media objects prior to
`upload. In the case of digital images, the tool can
`perform sizing and formatting, for example.
`Information capture is performed with information
`
`
`1 In its opening brief, Summit 6 revised its proposal to be consistent with the language recited in the ʼ515 patent claims; hence Summit add the phrase “one or more image files,
`video files, or audio files” in the bracketed portion of its construction.
`
`2 For ease of reference, all specification citations are to the ʼ557 Patent. But the column and line specification citations can also be found within the ʼ482 and ʼ515 Patents.
`
`3 In their responsive brief, Defendants offered this alternative construction to their original proposal. Defendants’ Responsive Claim Construction Brief, Dkt. No. 229, at 5.
`Summit 6 has not had an opportunity to respond to this argument and the inclusion of this definition in the chart does not constitute an agreement or waiver on the part of Summit
`6.
`
`
`
`- 1 -
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 12 of 203 PageID 11961
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`being uploaded together with the media objects. In an
`exemplary embodiment, information capture is both
`user-transparent (e.g., user ID and/or password) and
`user-visible (e.g., the user can provide captions for
`media objects). The submission of information about
`the user and the media objects facilitates automatic
`integration of the media objects within existing
`databases.”
`
`’557 Patent at 1:66-2:15: “The present invention,
`generally speaking, provides an improved web-based
`media submission tool. As with some existing tools,
`operation of the tool is drag and drop or the user can
`“click” to browse a directory to select media objects.
`Unlike existing tools, the tool provides several unique
`and valuable functions. For example, the tool
`provides the user an opportunity to confirm the
`submission with a visual representation, for example
`by generating a thumbnail image of the rich media file
`that has been selected. Additionally, batch submission
`is provided to allow a user to drag and drop or select a
`plurality of images or other media objects.
`Submission from a web page to a web page is also
`provided for. Even more importantly, the submission
`tool is configurable to perform a variable amount of
`intelligent preprocessing on media objects prior to
`upload. In the case of digital images, the tool can
`perform sizing and formatting, for example.”
`
`’557 Patent at 2:40-44: “The following describes the
`
`are:
`a) to the image submitter, the ability to submit media
`objects to web pages immediately without needing to
`overcome technical obstacles;
`b) to the image submitter, the ability to submit media
`objects to web pages "as is" without making
`
`
`
`modifications to the media objects prior to sending;
`c) to PictureWorks web site partner, access to a
`uniform standardized, reliable and secure channel for
`media acquisition; d) to PictureWorks web site
`partner, access to contributed media ‘made to order’, it
`meets their imaging specifications every time without
`human intervention[.]”
`
`4:58-60: “A key differentiator of the Prepare and Post
`tools is the browser, or client-side intelligence built
`into the tools.”
`
`4:65-5:20: “Other features are also
`provided via this intelligence, specifically, the ability
`to control the width and height of the media object
`identifier and the ability to preprocess the media
`objects in any number of ways prior to transporting to
`a second location. In the case of an image media
`object for example, the Prepare and Post tools may
`resize the image, (i.e., increase or decrease its size as
`defined by either physical dimensions, pixel count, of
`kilobytes). Compression, for example, is a type of
`- 2 -
`
`Claim Term and Relevant
`Claims
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 13 of 203 PageID 11962
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`sizing. The Prepare and Post tools may also change
`the image’s file format (a way of a media object being
`identified as to a ‘type’ or ‘kind’ of media), change the
`quality setting of the image, crop the image or change
`the aspect ratio, add text of annotations, encode or
`combine (including stitching) the media object, or
`enhance the media object by changing image values,
`for example, relating to contrast or saturation. This
`intelligence may be
`executed in a manner that is transparent to the end
`user. This transparency allows the end user to submit
`media to the Prepare and Post tools ‘as is,’ since the
`tools will automatically prepare it to meet the
`requirements of the second location.”
`
`5:42-46: “The Configuration Section overrides various
`configurable default settings that the customer can
`control. In the Configuration Section, the media object
`identifier component is sized and configured to
`perform any pre-processing of the image that may be
`desired prior to upload.”
`
`’557 File History SUMMIT6-
`00000158, 213; ’482 File History SUMMIT6-
`00000436, 1372, 1436, 1517, 1522-23; ’515 File
`History S6-00000202-203.
`
`’557 File History (SUMMIT6-
`00000158): “The preprocessing including checking a
`file size of the media object and if the file size of the
`- 3 -
`
`Prepare and Post.™. tools, which prepares and
`submits media objects from inside a standard browser,
`referred to as the first location, to a second location or
`server.”
`
`’557 Patent at 2:48-57: “The Prepare and Post tools
`refers to browser-side components which together
`provide the ability to submit and transport media
`objects over the web to be stored and served. Using
`the Prepare and Post tools, end users can submit
`images in an immediate, intuitive manner. No
`technical sophistication is required. In particular,
`understanding technical terms such as JPEG,
`resolution, pixel, kilobyte, transfer protocol, IP
`address, FTP etc., is not required, since the Prepare
`and Post tools handles all of these tasks for the user.”
`
`’557 Patent at 2:58-3:8: “The benefits of the Prepare
`and Post tool are:
`a) to the image submitter, the ability to submit media
`objects to web pages immediately without needing to
`overcome technical obstacles;
`b) to the image submitter, the ability to submit media
`objects to web pages “as is” without making
`modifications to the media objects prior to sending.
`c) to PictureWorks web site partner, access to a
`uniform, standardized, reliable and secure channel for
`media acquisition;
`d) to PictureWorks web site partner, access to
`contributed media “made to order”, it meets their
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 14 of 203 PageID 11963
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`media object is larger than a predetermined maximum
`file size reducing the file size of the media object.”
`
`’557 File History (SUMMIT6-00000213): “The
`examiner points to column 8 line 60 to column 9 line
`64 of Narayen as indicating that Narayen preprocesses
`the media object. None of the preprocessing described
`in Narayen is done in response to the acquisition of
`the media object
`
`without additional user input as claimed in
`independent claims 15, 16, 48, and 49. The
`modifications of the picture album described in
`Narayen is done in response to user input arranging
`the picture album.”
`
`’482 File History (SUMMIT6-00000436): “in
`Narayen the images are not selected via an embedded
`user interface of the web page, nor is the selected
`image preprocessed according to one or more
`parameters associated with the web page prior to
`transmission of the image from the local computer to
`another computer.”
`
`’482 File History SUMMIT6-00001372: “In
`Applicants’ invention, the media object originates at
`the local device and is desired to be uploaded to the
`remote device. In this context, pre-processing of the
`media object occurs prior to upload at the local device.
`. . . Pre-processing of the media object prior to upload
`- 4 -
`
`imaging specifications every time without human
`intervention;
`e) to PictureWorks web site partner, the ability to
`provide web site visitors with an easy, error free way
`to contribute media;
`f) to PictureWorks web site partner, access to
`contributed media in “real time” with no time delays.”
`
`’557 Patent at 4:58-5:2: “A key differentiator of the
`Prepare and Post tools is the browser, or client-side
`intelligence built into the tools. This intelligence
`directly provides features including those already
`outlined such as associating data with media objects,
`generating a visual representation of the media objects
`and generating media object identifiers dynamically or
`in a pre-set manner. Other features are also provided
`via this intelligence, specifically, the ability to control
`the width and height of the media object identifier and
`the ability to preprocess the media objects in any
`number of ways prior to transporting to a second
`location. In the case of an image media object for
`example, the Prepare and Post tools may resize the
`image, (i.e., increase or decrease its size as defined by
`either physical dimensions, pixel count, or kilobytes).
`Compression, for example, is a type of sizing. The
`Prepare and Post tools may also change the image's
`file format (a way of a media object being identified
`as to a “type” or “kind” of media), change the quality
`setting of the image, crop the image or change the
`aspect ratio, add text or annotations, encode or
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 15 of 203 PageID 11964
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`obviates the need for such processing to occur at the
`remote device.”
`
`’482 File History (SUMMIT6-00001436): “In
`Applicants’ claims at issue here, the digital content
`originates at the client device and is desired to be
`uploaded to the server device. In this context, pre-
`processing of the digital content occurs prior to upload
`at the client device. See, e.g., Abstract of Applicants’
`specification. Pre-processing of the digital content
`prior to upload obviates the need for
`all such processing to occur at the server device.”
`
`’482 File History (SUMMIT6-00001517): “In general,
`the client device pre-processes digital content based
`on pre-processing parameters obtained from another
`device. This pre-processing is performed prior to
`upload to a server device.”
`
`’482 File History (SUMMIT6-00001522): “Hui’s
`image correction and composition processes do not
`modify the image data contained within the FlashPix
`file. Specifically, the image correction process is
`designed to modify the viewing parameters (e.g.,
`color, tone, etc.) that control how the image data is to
`be displayed. The image correction process does not
`modify the underlying image data contained within the
`FlashPix file. The composition process of Hui also
`does not modify the image data contained within the
`FlashPix file. Rather, the composition process is
`- 5 -
`
`combine (including stitching) the media object, or
`enhance the media object by changing image values,
`for example, relating to contrast or saturation. This
`intelligence may be executed in a manner that is
`transparent to the end user. This transparency allows
`the end user to submit media to the Prepare and Post
`tools “as is,” since the tools will automatically prepare
`it to meet the requirements of the second location.
`Note that, although image submission may involve
`client-side processing, image processing is not
`required.”
`
`’557 Patent at 5:42-46: “The Configuration Section
`overrides various configurable default settings that the
`customer can control. In the Configuration Section,
`the media object identifier component is sized and
`configured to perform any preprocessing of the image
`that may be desired prior to upload.”
`
`See also, Appendix A.
`
`File Histories and Reexamination
`
`’557 Patent FH, 9/27/02 Remarks at 12: “Claims 16
`and 31 include the step of, in response to an
`association, automatically preprocessing the media
`object for requirements to the web site.”
`
`’557 Patent FH, 2/27/03 Interview Summary: “[T]he
`present invention embeds objects in web sites that
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 16 of 203 PageID 11965
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`enable client-side pre-processing.”
`
`’557 Patent FH, 03/06/03 Remarks at 19: “In claims
`16 and 49, the media object identifier at a web page
`includes a graphical user interface for acquiring media
`objects; the media objects automatically pre-
`processing the media object for the requirements of a
`web site, the pre-processing including checking a file
`size of the media object and if the file size of the
`media object is larger than a predetermined maximum
`file size reducing the file size of the media object.”
`
`’557 Patent FH, 03/06/03 Remarks at 21” “Claim 50
`covers acquiring a media object with a web page
`displayed at a local computer, preprocessing a media
`object at local computer without user selection of
`preprocessing and uploading the preprocessed media
`object from the local computer to a remote server.”);
`
`’482 Patent FH, 3/25/08 Remarks at 4: “New
`independent claim 7 recites that a selection of a media
`object is received via a user interface embedded in the
`web page, where the web page is displayed on a first
`computing device by a second computing device, and
`that the selected media object is preprocessed on the
`first computing device according to one or more
`parameters associated with the web page, prior to
`transmission of the selected media object from the
`first computing device to the second computing
`device.”
`
`designed to add or delete information (e.g., written
`captions) that is separate from the image data.
`Applicants submit that the image correction and
`composition processes of Hui are both directed to
`separate information that is associated with the image
`data, not to the image data itself. Accordingly, the
`correction and composition processes of Hui cannot be
`said to pre-process the digital content, which includes
`one or more of image content, video content, and
`audio content.”
`
`’482 File History (SUMMIT6-00001522-23): “More
`specifically, any image correction or composition
`processes disclosed by Hui are directed solely by the
`user. Control is not effected by a remote device. For
`example, Hui does not describe a remote device
`directing an application of specific coloring to an
`image. Instead, the user controls the specific coloring
`using the correction process tools made available to
`the user.”
`
`’515 File History (S6-00000202): “Significantly, the
`processing referred to at col. 11, lines 6-10 of Arledge
`does not occur at the client device as recited by claim
`1.”
`
`’515 File History (S6-00000203): “Again, further with
`respect to claims 31 and 33, Applicants note that the
`processing referred to at col. 11, lines 6-10 of Arledge
`- 6 -
`
`
`
`Claim Term and Relevant
`Claims
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 17 of 203 PageID 11966
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`does not occur at the client device as recited by claim
`23.”
`
`Extrinsic support:
`Markman order, hearing transcript, and associated
`briefing from the previous Summit 6 case; any future
`Federal Circuit rulings of matters on appeal in the
`previous Summit 6 case.
`
`
`- 7 -
`
`
`’482 Patent FH, 4/17/09 Remarks at 16-18: “In
`Applicants’ invention, the media object originates at
`the local device and is desired to be uploaded to the
`remote device. In this context, pre-processing of the
`media object occurs prior to upload at the local
`device.... Preprocessing of the media object prior to
`upload obviates the need for such processing to occur
`at the remote device.... In Fredlund, on the other hand
`... [t]he processing of the high-resolution version of
`the digital image data at the photofinisher obviates the
`need by Fredlund to transmit any pre-processed digital
`image data from the consumer’s computer system to
`the photofinisher.... Pre-processing and transmitting a
`low-resolution version of the digital image by the
`consumer’s computer system would result in a low-
`quality print.”
`
`’482 Patent FH, 04/17/09 Remarks at 16: “In
`Applicants’ invention, the media object originates at
`the local device and is desired to be uploaded to the
`remote device. In this context, pre-processing of the
`media object occurs prior to upload at the local device.
`. . . Pre-processing of the media object prior to upload
`obviates the need for such processing to occur at the
`remote device.”
`
`’482 Patent FH, 04/17/09 Remarks at 19: “Fredlund
`teaches away from transmitting any pre-processed
`digital image data by the consumer’s computer system
`
`
`
`
`
`
`
`
`
`

`
`Case 7:14-cv-00014-O Document 232 Filed 01/27/15 Page 18 of 203 PageID 11967
`PROPOSED CLAIM CONSTRUCTIONS AND IDENTIFICATION OF SUPPORTING EVIDENCE
`
`Claim Term and Relevant
`Claims
`
`Summit 6’s Construction and Evidence
`
`Defendants’ Construction and Evidence
`
`42 to the photo processing lab 14.
`
`’482 Patent FH, 4/17/09 Remarks at 21: “Fredlund
`teaches away from receiving, by the photo processing
`lab 14, any pre-processed digital image data from the
`consumer’s computer system 42.”
`
`’482 Patent FH, 12/07/09 Remarks at 23: “In
`Applicants’ claims at issue here, the digital content
`originates at the client device and is desired to be
`uploaded to the server device. In this context, pre-
`processing of the digital content occurs prior to upload
`at the client device. . . . Pre-processing of the digital
`content prior to upload obviates the need for all such
`processing to occur at the server device.”
`
`’482 Patent FH, 12/07/09 Remarks at 24: “ Usage of
`text-based electronic album files, text-based frame
`layout files, and text-based