Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 1 of 67 PageID 2819
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`Civil Action No. 3:11-cv-367-O
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`§ § § § § § § § § § § §
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`SUMMIT 6 LLC,
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`Plaintiff,
`
`v.
`
`RESEARCH IN MOTION
`CORPORATION, et al.,
`
`
`Defendants.
`
`CLAIM CONSTRUCTION ORDER
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`Before the Court are Plaintiff Summit 6 LLC’s (“Plaintiff”) Opening Claim Construction
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`Brief, with appendix in support (ECF Nos. 106, 113); Defendants Facebook, Inc., Photobucket
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`Corp., and Multiply, Inc.’s (collectively, the “Web Defendants”) Responsive Claim Construction
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`Brief (ECF No. 117); and Defendants Research in Motion Corporation, Research in Motion Limited,
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`Samsung Electronics Co. Ltd., and Samsung Telecommunications America LLC’s (collectively, the
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`“Mobile Phone Defendants”) Responsive Claim Construction Brief, with appendix in support (ECF
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`Nos. 118-19). Also before the Court are the Web Defendants’ Opening Claim Construction Brief,
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`with appendix in support (ECF Nos. 108, 114), and Plaintiff’s response thereto (ECF No. 120).
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`Finally before the Court are the Mobile Phone Defendants’ Opening Claim Construction Brief, with
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`appendix in support (ECF Nos. 115-16), and Plaintiff’s response thereto (ECF No. 122).
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`I.
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`BACKGROUND
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`Plaintiff is the current owner of two Patents-in-Suit: (1) United States Patent Number
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`6,895,557 (the “‘557 Patent”), filed on July 21, 1999 and issued on May 17, 2005; and (2) United
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`Apple/Twitter
`Ex. 1007
`IPR4 of U.S. Pat. No. 7,765,482
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`

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`States Patent Number 7,765,482 (the “‘482 Patent”), a continuation of the ‘557 Patent application
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`filed on October 8, 2004 and issued on July 27, 2010. The parties seek construction of twelve sets
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`of terms appearing in one or both of the ‘557 and ‘482 patents: (1) “pre-processing”; (2) “pre-
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`processing parameters” and “parameters used to control the pre-processing”; (3) “pre-processing the
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`media object by the media object identifier for the requirements of the third-party website, the pre-
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`processing being done without [additional] user selection of the pre-processing”; (4) “pre-processing
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`the media object . . . for the requirements of the third-party web site”; (5) “placement of . . . digital
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`content into a specified form” or “to place . . . digital content in a specified form”; (6) “remote
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`device” or “device separate from said client device”; (7) “information that enables identification of
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`a user” or “user identifier” or “user information”; (8) “publishing” or “publication”; (9) “a computer
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`implemented method of pre-processing digital content in a client device for subsequent electronic
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`[publishing / distribution]”; (10) “receiving . . . from a remote device” or “received . . . from a device
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`separate from a client device” or “provided to said client device by a device separate from said client
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`device”; (11) “displaying a preview image of said selected digital content”; and (12) “pre-processing
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`in accordance with one or more pre-processing parameters that have been stored in memory of said
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`client device” and similar terms. The parties have agreed on the construction of two additional
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`terms: (13) “combining (including stitching) of multiple media objects,” and (14) “adding text or
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`other annotation to the media object.”
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`II.
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`LEGAL STANDARDS – PATENT CLAIM CONSTRUCTION
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`Patent infringement is the unauthorized making, using, selling, offering to sell, or importing
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`into the United States of any patented invention during the term of the patent. 35 U.S.C. § 271(a).
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`In a patent infringement case, a court first determines the proper construction of the patent claims
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`by establishing, as a matter of law, the scope and boundaries of the subject-matter of the patent.
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S.
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`370, 384-85 (1996). Second, the trier of fact compares the properly construed claims to the allegedly
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`infringing devices and determines whether there has been an infringement. Id. Here, the issue
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`currently before the Court is the proper construction of certain disputed claims in the ‘557 Patent and
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`the ‘482 Patent.
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`A.
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`Rules of Claim Construction
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`The claims of a patent are the numbered paragraphs at the end of the patent that define the
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`scope of the invention, and thus the scope of the patentee’s right to exclude others from making,
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`using, or selling the patented invention. See Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333,
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`1335-36 (Fed. Cir. 2004). Claim construction is the process of giving proper meanings to the claim
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`language thereby defining the scope of the protection. See Bell Commc’ns Research, Inc. v. Vitalink
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`Commc’ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995) (internal citations omitted).
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`Claim construction starts with the language of the claim itself since a patent’s claims define
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`the invention to which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d
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`1303, 1312 (Fed. Cir. 2005) (en banc). “[T]he claims themselves provide substantial guidance as
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`to the meaning of particular claim terms.” Id. at 1314. Moreover, claim terms should be given their
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`ordinary and customary meaning as understood by a person of ordinary skill in the art as of the
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`effective filing date of the patent application. Id. at 1313. This is because a patent is addressed to,
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`and intended to be read by, others skilled in the particular art. Id. However, the patentee is free to
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`define his own terms, so long as any special definition given to a term is clearly defined in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`When construing disputed claim terms the court should look first to the intrinsic record of
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`the patent, including the claims and the specification, to determine the meaning of words in the
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`claims. Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. 2005).
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`“[T]he specification is always highly relevant to the claim construction analysis. Usually it is
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`dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315
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`(internal quotation marks omitted). The specification acts as a dictionary when it expressly or
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`implicitly defines terms. Id. at 1321. Courts should also refer to the prosecution history if it is in
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`evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The
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`prosecution history is part of the intrinsic record and consists of a complete record of all proceedings
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`before the United States Patent and Trademark Office, including prior art cited during the
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`examination of the patent, and express representations made by the applicant as to the scope of the
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`claims. Id.
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`The Federal Circuit has also stated that district courts may “rely on extrinsic evidence, which
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`consists of all evidence external to the patent and prosecution history, including expert and inventor
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`testimony, dictionaries, and learned treatises.” Philips, 415 F.3d at 1317 (internal quotation marks
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`omitted). Dictionaries and treatises can be “useful in claim construction[,]” particularly technical
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`dictionaries which may help the court “to better understand the underlying technology and the way
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`in which one of skill in the art might use the claim terms.” Id. at 1318 (internal quotation marks
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`omitted). As to expert testimony, the Federal Circuit has stated:
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`[E]xtrinsic evidence in the form of expert testimony can be useful to
`a court for a variety of purposes, such as to provide background on
`the technology at issue, to explain how an invention works, to ensure
`that the court’s understanding of the technical aspects of the patent is
`consistent with that of a person of skill in the art, or to establish that
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`a particular term in the patent or the prior art has a particular meaning
`in the pertinent field.
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`Id. However, “a court should discount any expert testimony that is clearly at odds with the claim
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`construction mandated by the claims themselves, the written description, and the prosecution history,
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`in other words, with the written record of the patent.” Id. (internal quotation marks omitted).
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`Extrinsic evidence is less significant than the intrinsic record and undue reliance on it may pose a
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`risk of changing the meaning of claims, contrary to the public record contained in the written patent.
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`Id. at 1317, 1319.
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`III.
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`CLAIM CONSTRUCTION ANALYSIS
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`1.
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`“pre-processing”
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`Plaintiff
`“in preparation for
`transmission, modifying the
`underlying data of the media
`object [digital content] in
`accordance with the
`requirements of another
`device”
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`Web Defendants
`“modifying the [media object
`data / data of the digital
`content] at the browser before
`transmitting to a server
`device”
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`Mobile Phone Defendants
`“modifying the digital
`content at the client device
`before transmitting to a
`server device”
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`The parties agree that pre-processing involves modification of the material being pre-
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`processed and that pre-processing occurs prior to transmission of the pre-processed material.
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`However, the parties dispute: (a) what material is pre-processed; (b) where pre-processing occurs;
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`(c) where the pre-processed material is transmitted; and (d) whether pre-processing is done “in
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`accordance with the requirements of another device.”
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`a.
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`What material is pre-processed?
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`The Plaintiff, the Web Defendants, and the Mobile Phone Defendants offer the following
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`respective suggestions as to what material is pre-processed: (1) “the underlying data of the media
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`object [digital content]”; (2) “the [media object data / data of the digital content]”; and (3) “the
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`digital content.”
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`Relying on the prosecution history, Plaintiff argues that pre-processing occurs to “the
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`underlying data of the media object [digital content].” See Pl.’s Opening Br. 9, ECF No. 106.
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`Plaintiff states that, consistent with this construction, the applicants distinguished the Hui prior art
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`by noting that “[t]he image correction process [of Hui] does not modify the underlying image data
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`. . . [but] is designed to add or delete information . . . that is separate from the image data.” See id.
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`(quoting App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22, 2010), at App.
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`100, ECF No. 113). In this context, Plaintiff also refers to the applicants’ response to the written
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`description rejection, which states that “the client device pre-processes digital content.” See id.
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`(quoting App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22, 2010), at App.
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`95, ECF No. 113). The Web Defendants respond that Plaintiff’s use of the term “underlying data”
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`does not resolve the parties’ basic dispute over what types of modifications constitute pre-processing.
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`See Web Defs.’ Opening Br. 14, ECF No. 108. Likewise, the Mobile Phone Defendants criticize the
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`phrase “underlying data” as being a “nebulous concept[].” See Mobile Phone Defs.’ Responsive Br.
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`12, ECF No. 118.
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`The Web Defendants argue that pre-processing requires modifying “the [media object data
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`/ data of the digital content].” See Web Defs.’ Opening Br. 14-15, ECF No. 108. According to the
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`Web Defendants, this construction properly limits pre-processing to modification of the actual image
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`or sound data of a media object, as opposed to associating other data–like a comment, tag, or file
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`name–with the image data. See id.
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`The Mobile Phone Defendants argue that pre-processing should be understood as modifying
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`“the digital content,” since the prosecution history twice refers to “pre-processing of the media
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`object.” See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115 (quoting App. Supp. Mobile Phone
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`Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 59-60, ECF No. 116).
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`Plaintiff agrees with the Mobile Phone Defendants that the data being modified during pre-
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`processing “would be actual digital content data and not data separate from the digital content.” Pl.’s
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`Resp. to Mobile Phone Defs. 10, ECF No. 122. Nevertheless, Plaintiff argues that its proposed
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`language, while similar to the Mobile Phone Defendants’ proposal, is more precise. See id.
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`With regard to what material is pre-processed, the parties’ only dispute is how best to express
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`their consensus that the actual media object or digital content, as opposed to data merely associated
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`with the media object or digital content, is subject to pre-processing. During the prosecution history,
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`the applicants repeatedly stated that, in the case of an image, the material subject to pre-processing
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`is the “image data.” See App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22,
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`2010), at App. 99-100, ECF No. 113. Replacing the term “image” with the broader terms “media
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`object” and “digital content” as used in the claims, see, e.g., ‘557 Patent claim 1; ‘482 Patent claim
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`1, the Court essentially arrives at the Web Defendants’ proposal of “media object data” or “digital
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`content data.” While the applicants consistently used the term “data” in the prosecution history, the
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`applicants apparently struggled with the best way to differentiate “image data” from data merely
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`associated with an image. Accordingly, the applicants modified “image data” in a variety of ways,
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`as by describing: “raw data for the image”; “the image data itself”; “the image data contained within
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`the . . . file”; “the underlying image data contained within the . . . file”; and “actual image data.” See
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`App. Supp. Pl.’s Opening Br. (Resp. Office Action of Jan. 22, 2010), at App. 99-100, ECF No. 113.
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`Likewise, the applicants noted that the Hui prior art merely modified “information associated with
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`the image”; “information . . . that is separate from the image”; “separate information that is
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`associated with the image data”; and “information associated with digital content.” See id. Based
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`on the foregoing, the Court finds it would be helpful to the jury to clarify that the material subject
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`to pre-processing does not include data merely associated with the media object or digital content.
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`Accordingly, the Court finds that the material subject to pre-processing is “[media object
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`data] / [digital content data], as opposed to data merely associated with the [media object] / [digital
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`content].”
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`b.
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`Where does pre-processing occur?
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`Plaintiff’s proposed construction is silent as to where pre-processing occurs. By contrast, the
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`Web Defendants argue that pre-processing occurs “at the browser,” while the Mobile Phone
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`Defendants suggest that pre-processing occurs “at the client device.”
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`The Web Defendants argue that pre-processing must occur “at the browser” and not on a
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`server. See Web Defs.’ Opening Br. 11-13, ECF No. 108. In support of this contention, the Web
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`Defendants first argue that the claims of the ‘557 and ‘482 Patents require pre-processing to occur
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`at a browser. See id. (quoting ‘557 Patent claims 1, 45 and ‘482 Patent claim 1). Next, the Web
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`Defendants argue that the specification disavows non-browser based pre-processing by identifying
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`the “browser, or client side intelligence” of the Prepare and Post tools as a “key differentiator” from
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`the prior art. See id. (quoting ‘557 Patent col.4, ll.58-60). Furthermore, the Web Defendants state
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`that the written description demonstrates the scope of the claimed invention by repeatedly and
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`uniformly referring to pre-processing as being web-based and occurring at a browser. See id.
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`(quoting ‘557 Patent col. 2, ll.40-44, 48-51). Moving to the prosecution history, the Web Defendants
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`argue that the applicants distinguished the Fredlund prior art and their own invention by noting that
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`the former involved server-side processing while the latter required browser-side processing. See
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`id. (quoting App. Supp. Web Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009),
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`at App. 127-29, ECF No. 114). Based on the foregoing, the Web Defendants claim that pre-
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`processing is properly located “at the browser.” See id.
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`In response to the Web Defendants, Plaintiff first argues that locating all pre-processing “at
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`the browser” would nullify important differences between the claims of the ‘557 Patent and would
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`make the broader claims of the ‘482 Patent superfluous. See Pl.’s Resp. to Web Defs. 4-9, ECF No.
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`120. Accordingly, Plaintiff states that the applicants knew how and when to inform the reader of a
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`“browser” requirement by using that term in certain claims, including Claims 56 and 71 of the ‘557
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`Patent, but not using the term elsewhere in the ‘557 Patent or in any claim of the ‘482 Patent. See
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`Pl.’s Opening Br. 10-11, ECF No. 106. Next, Plaintiff argues that the Web Defendants’ “at the
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`browser” limitation is improper because it takes a description from the preferred web browser
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`embodiment and reads it into the claims of the ‘557 and ‘482 Patents. See Pl.’s Opening Br. 10-11,
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`ECF No. 106. Here, Plaintiff notes that each of the Web Defendants’ citations to the written
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`description is to a discussion of the preferred embodiment, not the invention as a whole. See Pl.’s
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`Resp. to Web Defs. 4-9, ECF No. 120. Finally, Plaintiff argues that the prosecution history cited by
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`the Web Defendants nowhere mentions the narrow concept of “browser”-side processing but
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`distinguishes Fredlund on the more general basis of “device”-side processing. See id.
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`For their part, the Mobile Phone Defendants argue that pre-processing occurs “at the client
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`device.” See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115. In support of this proposal, the
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`Mobile Phone Defendants quote the same prosecution history as the Web Defendants, including the
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`applicants’ statement that “pre-processing occurs prior to upload at the local device.” See id.
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`(quoting App. Supp. Mobile Phone Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4,
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`2009), at App. 59-60, ECF No. 116-4). Other than offering a proposed construction that is silent as
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`to the location of pre-processing, Plaintiff offers no response to the Mobile Phone Defendants’
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`suggestion that pre-processing occurs “at the client device.” See Pl.’s Resp. to Mobile Phone Defs.
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`8-11, ECF No. 122. As such, the Web Defendants in their responsive briefing state that Plaintiff has
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`not disputed that pre-processing requires processing on the user’s device. See Web Defs.’
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`Responsive Br. 4, ECF No. 117.
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`In determining where pre-processing occurs, the Court has started with the language of the
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`claims. As Plaintiff concedes, the majority of the claims appearing in the ‘557 Patent–which discuss
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`pre-processing by a “media object identifier . . . embedded within a third party web site”–may fairly
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`be read to require pre-processing in a browser. See, e.g., ‘557 Patent claim 1. Importantly, however,
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`the “browser” limitation is not supported by every claim of the ‘557 Patent, such as claims which
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`recite pre-processing “at the local computer.” See id. claim 45. Furthermore, the language of the
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`‘482 Patent nowhere refers to a browser, but consistently describes pre-processing either “in a client
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`device” or “in a local device.” See, e.g., ‘482 Patent claims 1, 11. Because the claim language is
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`not limited to pre-processing “at the browser,” the Court may impose a browser limitation only if
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`the specification defines pre-processing to occur at the browser, or if the intrinsic evidence contains
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`a disavowal of claim scope so as to limit the broadly drafted pre-processing claims to include an “at
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`the browser” limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365-68
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`(Fed. Cir. 2012) (refusing to find “lexicography or disavowal” absent a clearly expressed intent to
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`redefine a term or limit claim scope, noting that the court does not “read limitations from the
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`specification into claims” and “[i]t is not enough for a patentee to simply disclose a single
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`embodiment or use a word in the same manner in all embodiments”). For the reasons argued by
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`Plaintiff, the Court agrees that the intrinsic evidence relied upon by the Web Defendants in support
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`of their “at the browser” limitation is insufficient to constitute a disavowal of claim scope.
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`Specifically, the Court notes that: (1) the portions of the specification that discuss pre-processing
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`within a browser relate to the preferred web site embodiment, and may not be grafted upon the
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`claims as a whole; and (2) the applicants distinguished the Fredlund prior art on the basis of client-
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`side processing, not processing within a browser. Furthermore, the Court finds that the applicants’
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`description of the current invention as a “web-based media submission tool” is not a “clear and
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`unmistakable disclaimer” of pre-processing that occurs outside of a browser. See id.
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`Though the Court finds imposing an “at the browser” limitation would be improper, the
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`Court disagrees with Plaintiff that the definition of pre-processing may be silent as to the location
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`of pre-processing. The claim language refers to pre-processing either: (1) by a “media object
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`identifier”; or (2) at the “local computer,” “client device,” or “local device.” See ‘557 Patent claims
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`1, 45; ‘482 Patent claims 1, 11. As to the “media object identifier” recited in certain claims of the
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`‘557 Patent, the applicants made clear in the prosecution history that this claim feature enables
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`“client-side pre-processing.” See App. Supp. Web Defs.’ Opening Br. (‘557 Patent, Interview
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`Summ. Feb. 27, 2003), at App. 219, ECF No. 114-4. Elsewhere in the prosecution history, the
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`applicants consistently characterized pre-processing as occurring either “at the client device” or “at
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`the local device.” See, e.g., id. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 127, ECF
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`No. 114-3 (“local device”); id. (‘482 Patent, Resp. Office Action Jan. 22, 2010), at App. 199, ECF
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`No. 114-4 (“client device”).
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`Based on the foregoing, the Court finds that locating pre-processing “at the client or local
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`device” is supported by the claim language and prosecution history, and is sufficiently broad so as
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`to be consistent with each claim of the ‘557 and ‘482 Patents. Accordingly, the Court finds that pre-
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`processing must occur “at the client or local device.”
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`c.
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`Where is the pre-processed material transmitted?
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`Plaintiff’s proposed construction is silent as to where pre-processed material is ultimately
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`transmitted. For their part, the Web Defendants and the Mobile Phone Defendants both argue that
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`pre-processed material is transmitted “to a server device.”
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`As far as the Court can discern, the Web Defendants generally argue that, because the ‘557
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`and ‘482 Patents claim a web-based invention, pre-processed material must be transmitted “to a
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`server device.” See generally Web Defs.’ Opening Br., ECF No. 108; Web Defs.’ Responsive Br.,
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`ECF No. 117. More specifically, the Web Defendants point to the preferred embodiment’s statement
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`that pre-processing results in transportation “to a second location,” which the specification earlier
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`defines as a “server.” See Web Defs.’ Responsive Br. 8, ECF No. 117 (citing ‘557 Patent col.4 l.67-
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`col.5 l.2). The Web Defendants also direct the Court’s attention to the specification and their
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`arguments regarding the meaning of “remote device,” which they suggest should be construed as a
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`“web server.” See id. at 4 n.7, 29-30. The Mobile Phone Defendants do not specifically explain
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`their use of the phrase “to a server device,” but quote the prosecution history in general support of
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`their proposed construction. See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115 (quoting App.
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`Supp. Mobile Phone Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App.
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`59-60, ECF No. 116-4).
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`Addressing the Defendants’ joint position, Plaintiff first argues that a construction requiring
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`pre-processed material to be transmitted “to a server device” would conflict with the claim language,
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`since certain claims recite transmission to a “remote device,” other claims use the narrower term
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`“server device,” and Claim 1 uses both terms. See Pl.’s Opening Br. 9, ECF No. 106. The Mobile
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`Phone Defendants suggest that this argument is irrelevant to their position because the claims in
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`which the term “remote device” is used instead of “server device” are not asserted against the Mobile
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`Phone Defendants. See Mobile Phone Defs.’ Responsive Br. 13, ECF No. 118. Plaintiff replies that
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`such unasserted claims are relevant to claim construction because the term “pre-processing” should
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`be construed in a manner that is consistent throughout the patent, including in the context of
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`unasserted claims. See Pl.’s Resp. to Mobile Phone Defs. 9-10, ECF No. 122 (citing Eolas Techs.,
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`Inc. v. Adobe Sys., Inc., 810 F. Supp. 2d 795, 798 (E.D. Tex. 2011). Next, Plaintiff argues that the
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`Web Defendants improperly refer to pre-processed material being transmitted to a server in the
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`preferred embodiment, because mere disclosure of a single embodiment does not limit the scope of
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`the claims, and the Patents do not otherwise disclose a “server” limitation on pre-processing. See
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`id. at 10. Finally, Plaintiff responds that the prosecution history cited by the Mobile Phone
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`Defendants is contrary to their proposal, since it uses the term “remote device” rather than “server
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`device.” See Pl.’s Resp. to Mobile Phone Defs. 9, ECF No. 122.
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`The Court begins by noting that the claim language recites transmission of pre-processed
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`material to a “server device” in some claims and to a “remote device” in others. See, e.g., ‘482
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`Patent claim 1 (“server device”); id. claim 11 (“remote device”). Accordingly, the claim language
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`does not support Defendants’ universal “server limitation.” Furthermore, the Court finds that the
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`applicants nowhere disclaimed pre-processing involving transmission of pre-processed material to
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`a device other than a server device. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1365-68 (Fed. Cir. 2012). As discussed infra, the Court also finds that the term “remote device”
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`should not be construed as a “server” or “web server,” but should be defined more broadly than the
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`term “server device.” See infra Part III.6. Finally, the Court notes that the intrinsic history,
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`including the portions cited by the Web Defendants, consistently describe the invention as involving
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`pre-processing of material prior to “upload to [a] remote device.” See, e.g., App. Supp. Mobile
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`Phone Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 59-60, ECF
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`No. 116-4.
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`Based on the foregoing, the Court finds that the invention pre-processes material in
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`preparation for transmission “to a remote device.” The Court finds that this construction is
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`consistent with each claim of the ‘557 and ‘482 Patents and is supported by the intrinsic record.
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`d.
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`Is pre-processing done “in accordance with the requirements of another
`device”?
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`Finally, the parties dispute Plaintiff’s claim that pre-processing is done “in accordance with
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`the requirements of another device.”
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`Plaintiff argues that the specification and prosecution history make clear that pre-processing
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`prepares media for transmission using the specifications of another device. See Pl.’s Opening Br.
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`8, ECF No. 106. Specifically, Plaintiff points to language in the specification, which states that the
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`“submission tool is configurable to perform a variable amount of preprocessing on media objects
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`prior to upload.” See id. at 8-9 (quoting ‘557 Patent col.2 ll.11-15). Plaintiff also notes that the
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`preferred web site embodiment has the benefit of “meet[ing] [a web site partner’s] imaging
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`specifications every time,” has “the ability to preprocess the media objects any number of ways prior
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`to transporting to a second location,” and “will automatically prepare [media] to meet the
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`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 15 of 67 PageID 2833
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`requirements of the second location.” See id. (quoting ‘557 Patent col.3 ll.2-3, col.4 l.67-col.5 l.2,
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`col.5 ll.19-20). Furthermore, Plaintiff quotes the applicants’ response to a written description
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`rejection of “pre-processing,” which states: “In general, the client device pre-processes digital
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`content based on pre-processing parameters obtained from another device. This pre-processing is
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`performed prior to upload to a server device.” See id. at 9 (quoting App. Supp. Pl.’s Opening Br.
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`(‘482 Patent, Resp. Office Action of Jan. 22, 2010), at App. 95, ECF No. 113).
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`The Web Defendants do not address Plaintiff’s claim that pre-processing is done “in
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`accordance with the requirements of another device.” See generally Web Defs.’ Responsive Br. 4-
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`11, ECF No. 117. For their part, the Mobile Phone Defendants argue that this added limitation was
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`crafted by the applicants to enable them to later distort the claim scope to avoid prior art. See Mobile
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`Phone Defs.’ Responsive Br. 12, ECF No. 118. The Mobile Phone Defendants also criticize this
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`phrase as being unclear, and suggest that a clearer limitation would include the language that
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`Plaintiff quoted from the ‘482 Patent’s specification: “[the imaging recipient’s] specifications.” See
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`id. at 12-13.
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`As always, the Court begins with the claim language. Here, the Court notes that the claims
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`variously recite “pre-processing . . . for the requirements of the third-party web site” (‘557 Patent
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`claim 1); “pre-processing . . . wherein the web page contains parameters used to control the pre-
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`processing” (‘557 Patent claim 45); “pre-processing . . . using . . . pre-processing parameters
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`[received from a remote device]” (‘482 Patent claim 1); “pre-processing . . . in accordance with one
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`or more pre-processing parameters that are received from a device separate from said client device”
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`(‘482 Patent claim 13); and “pre-processing . . . in accordance with one or more pre-processing
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`parameters that are received from a remote device” (‘482 Patent claim 35). As demonstrated, the
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`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 16 of 67 PageID 2834
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`claim language requires “pre-processing” to be done: (1) for, using, or in accordance with; (2)
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`requirements, parameters, or pre-processing parameters; (3) of a third-party web site, web page,
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`remote device, or device separate from the client device. Plaintiff’s proposal attempts to express
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`these various limitations in a single phrase by defining pre-processing as occurring “in accordance
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`with the requirements of another device.” See Pl.’s Opening Br. 8, ECF No. 106. Importantly,
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`however, the claims do not define pre-processing as occurring “in accordance with the requirements
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`of another device”; instead, the claims recite pre-processing with the additional limitations described
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`above. Likewise, the prosecution history demonstrates that the applicants understood the term “pre-
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`processing” to be sufficiently broad to encompass systems that may or may not involve pre-
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`processing “in accordance with the requirements of another device.” So, for example, the applicants
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`distinguished the Narayen prior art on the basis that “[n]one of the preprocessing described in
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`Narayen is done in response to the acquisition of the media object without additional user input as
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`claimed in independent claims 15, 16, 48, and 49. The modifications of the picture album described
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`in N