`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`Civil Action No. 3:11-cv-367-O
`
`§§§§§§§§§§§§
`
`SUMMIT 6 LLC,
`
`Plaintiff,
`
`v.
`
`RESEARCH IN MOTION
`CORPORATION, et al.,
`
`
`Defendants.
`
`CLAIM CONSTRUCTION ORDER
`
`Before the Court are Plaintiff Summit 6 LLC’s (“Plaintiff”) Opening Claim Construction
`
`Brief, with appendix in support (ECF Nos. 106, 113); Defendants Facebook, Inc., Photobucket
`
`Corp., and Multiply, Inc.’s (collectively, the “Web Defendants”) Responsive Claim Construction
`
`Brief (ECF No. 117); and Defendants Research in Motion Corporation, Research in Motion Limited,
`
`Samsung Electronics Co. Ltd., and Samsung Telecommunications America LLC’s (collectively, the
`
`“Mobile Phone Defendants”) Responsive Claim Construction Brief, with appendix in support (ECF
`
`Nos. 118-19). Also before the Court are the Web Defendants’ Opening Claim Construction Brief,
`
`with appendix in support (ECF Nos. 108, 114), and Plaintiff’s response thereto (ECF No. 120).
`
`Finally before the Court are the Mobile Phone Defendants’ Opening Claim Construction Brief, with
`
`appendix in support (ECF Nos. 115-16), and Plaintiff’s response thereto (ECF No. 122).
`
`I.
`
`BACKGROUND
`
`Plaintiff is the current owner of two Patents-in-Suit: (1) United States Patent Number
`
`6,895,557 (the “‘557 Patent”), filed on July 21, 1999 and issued on May 17, 2005; and (2) United
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 2 of 67 PageID 2820
`
`States Patent Number 7,765,482 (the “‘482 Patent”), a continuation of the ‘557 Patent application
`
`filed on October 8, 2004 and issued on July 27, 2010. The parties seek construction of twelve sets
`
`of terms appearing in one or both of the ‘557 and ‘482 patents: (1) “pre-processing”; (2) “pre-
`
`processing parameters” and “parameters used to control the pre-processing”; (3) “pre-processing the
`
`media object by the media object identifier for the requirements of the third-party website, the pre-
`
`processing being done without [additional] user selection of the pre-processing”; (4) “pre-processing
`
`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
`
`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
`
`[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
`
`device”; (11) “displaying a preview image of said selected digital content”; and (12) “pre-processing
`
`in accordance with one or more pre-processing parameters that have been stored in memory of said
`
`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.”
`
`II.
`
`LEGAL STANDARDS – PATENT CLAIM CONSTRUCTION
`
`Patent infringement is the unauthorized making, using, selling, offering to sell, or importing
`
`into the United States of any patented invention during the term of the patent. 35 U.S.C. § 271(a).
`
`In a patent infringement case, a court first determines the proper construction of the patent claims
`
`2
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 3 of 67 PageID 2821
`
`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.
`
`370, 384-85 (1996). Second, the trier of fact compares the properly construed claims to the allegedly
`
`infringing devices and determines whether there has been an infringement. Id. Here, the issue
`
`currently before the Court is the proper construction of certain disputed claims in the ‘557 Patent and
`
`the ‘482 Patent.
`
`A.
`
`Rules of Claim Construction
`
`The claims of a patent are the numbered paragraphs at the end of the patent that define the
`
`scope of the invention, and thus the scope of the patentee’s right to exclude others from making,
`
`using, or selling the patented invention. See Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333,
`
`1335-36 (Fed. Cir. 2004). Claim construction is the process of giving proper meanings to the claim
`
`language thereby defining the scope of the protection. See Bell Commc’ns Research, Inc. v. Vitalink
`
`Commc’ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995) (internal citations omitted).
`
`Claim construction starts with the language of the claim itself since a patent’s claims define
`
`the invention to which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312 (Fed. Cir. 2005) (en banc). “[T]he claims themselves provide substantial guidance as
`
`to the meaning of particular claim terms.” Id. at 1314. Moreover, claim terms should be given their
`
`ordinary and customary meaning as understood by a person of ordinary skill in the art as of the
`
`effective filing date of the patent application. Id. at 1313. This is because a patent is addressed to,
`
`and intended to be read by, others skilled in the particular art. Id. However, the patentee is free to
`
`define his own terms, so long as any special definition given to a term is clearly defined in the
`
`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
`
`3
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 4 of 67 PageID 2822
`
`When construing disputed claim terms the court should look first to the intrinsic record of
`
`the patent, including the claims and the specification, to determine the meaning of words in the
`
`claims. Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. 2005).
`
`“[T]he specification is always highly relevant to the claim construction analysis. Usually it is
`
`dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315
`
`(internal quotation marks omitted). The specification acts as a dictionary when it expressly or
`
`implicitly defines terms. Id. at 1321. Courts should also refer to the prosecution history if it is in
`
`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
`
`before the United States Patent and Trademark Office, including prior art cited during the
`
`examination of the patent, and express representations made by the applicant as to the scope of the
`
`claims. Id.
`
`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
`
`testimony, dictionaries, and learned treatises.” Philips, 415 F.3d at 1317 (internal quotation marks
`
`omitted). Dictionaries and treatises can be “useful in claim construction[,]” particularly technical
`
`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
`
`omitted). As to expert testimony, the Federal Circuit has stated:
`
`[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
`
`4
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 5 of 67 PageID 2823
`
`a particular term in the patent or the prior art has a particular meaning
`in the pertinent field.
`
`Id. However, “a court should discount any expert testimony that is clearly at odds with the claim
`
`construction mandated by the claims themselves, the written description, and the prosecution history,
`
`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
`
`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.
`
`III.
`
`CLAIM CONSTRUCTION ANALYSIS
`
`1.
`
`“pre-processing”
`
`Plaintiff
`“in preparation for
`transmission, modifying the
`underlying data of the media
`object [digital content] in
`accordance with the
`requirements of another
`device”
`
`Web Defendants
`“modifying the [media object
`data / data of the digital
`content] at the browser before
`transmitting to a server
`device”
`
`Mobile Phone Defendants
`“modifying the digital
`content at the client device
`before transmitting to a
`server device”
`
`The parties agree that pre-processing involves modification of the material being pre-
`
`processed and that pre-processing occurs prior to transmission of the pre-processed material.
`
`However, the parties dispute: (a) what material is pre-processed; (b) where pre-processing occurs;
`
`(c) where the pre-processed material is transmitted; and (d) whether pre-processing is done “in
`
`accordance with the requirements of another device.”
`
`a.
`
`What material is pre-processed?
`
`The Plaintiff, the Web Defendants, and the Mobile Phone Defendants offer the following
`
`5
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 6 of 67 PageID 2824
`
`respective suggestions as to what material is pre-processed: (1) “the underlying data of the media
`
`object [digital content]”; (2) “the [media object data / data of the digital content]”; and (3) “the
`
`digital content.”
`
`Relying on the prosecution history, Plaintiff argues that pre-processing occurs to “the
`
`underlying data of the media object [digital content].” See Pl.’s Opening Br. 9, ECF No. 106.
`
`Plaintiff states that, consistent with this construction, the applicants distinguished the Hui prior art
`
`by noting that “[t]he image correction process [of Hui] does not modify the underlying image data
`
`. . . [but] is designed to add or delete information . . . that is separate from the image data.” See id.
`
`(quoting App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22, 2010), at App.
`
`100, ECF No. 113). In this context, Plaintiff also refers to the applicants’ response to the written
`
`description rejection, which states that “the client device pre-processes digital content.” See id.
`
`(quoting App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22, 2010), at App.
`
`95, ECF No. 113). The Web Defendants respond that Plaintiff’s use of the term “underlying data”
`
`does not resolve the parties’ basic dispute over what types of modifications constitute pre-processing.
`
`See Web Defs.’ Opening Br. 14, ECF No. 108. Likewise, the Mobile Phone Defendants criticize the
`
`phrase “underlying data” as being a “nebulous concept[].” See Mobile Phone Defs.’ Responsive Br.
`
`12, ECF No. 118.
`
`The Web Defendants argue that pre-processing requires modifying “the [media object data
`
`/ data of the digital content].” See Web Defs.’ Opening Br. 14-15, ECF No. 108. According to the
`
`Web Defendants, this construction properly limits pre-processing to modification of the actual image
`
`or sound data of a media object, as opposed to associating other data–like a comment, tag, or file
`
`name–with the image data. See id.
`
`6
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 7 of 67 PageID 2825
`
`The Mobile Phone Defendants argue that pre-processing should be understood as modifying
`
`“the digital content,” since the prosecution history twice refers to “pre-processing of the media
`
`object.” See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115 (quoting App. Supp. Mobile Phone
`
`Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 59-60, ECF No. 116).
`
`Plaintiff agrees with the Mobile Phone Defendants that the data being modified during pre-
`
`processing “would be actual digital content data and not data separate from the digital content.” Pl.’s
`
`Resp. to Mobile Phone Defs. 10, ECF No. 122. Nevertheless, Plaintiff argues that its proposed
`
`language, while similar to the Mobile Phone Defendants’ proposal, is more precise. See id.
`
`With regard to what material is pre-processed, the parties’ only dispute is how best to express
`
`their consensus that the actual media object or digital content, as opposed to data merely associated
`
`with the media object or digital content, is subject to pre-processing. During the prosecution history,
`
`the applicants repeatedly stated that, in the case of an image, the material subject to pre-processing
`
`is the “image data.” See App. Supp. Pl.’s Opening Br. (‘482 Patent, Resp. Office Action of Jan. 22,
`
`2010), at App. 99-100, ECF No. 113. Replacing the term “image” with the broader terms “media
`
`object” and “digital content” as used in the claims, see, e.g., ‘557 Patent claim 1; ‘482 Patent claim
`
`1, the Court essentially arrives at the Web Defendants’ proposal of “media object data” or “digital
`
`content data.” While the applicants consistently used the term “data” in the prosecution history, the
`
`applicants apparently struggled with the best way to differentiate “image data” from data merely
`
`associated with an image. Accordingly, the applicants modified “image data” in a variety of ways,
`
`as by describing: “raw data for the image”; “the image data itself”; “the image data contained within
`
`the . . . file”; “the underlying image data contained within the . . . file”; and “actual image data.” See
`
`App. Supp. Pl.’s Opening Br. (Resp. Office Action of Jan. 22, 2010), at App. 99-100, ECF No. 113.
`
`7
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 8 of 67 PageID 2826
`
`Likewise, the applicants noted that the Hui prior art merely modified “information associated with
`
`the image”; “information . . . that is separate from the image”; “separate information that is
`
`associated with the image data”; and “information associated with digital content.” See id. Based
`
`on the foregoing, the Court finds it would be helpful to the jury to clarify that the material subject
`
`to pre-processing does not include data merely associated with the media object or digital content.
`
`Accordingly, the Court finds that the material subject to pre-processing is “[media object
`
`data] / [digital content data], as opposed to data merely associated with the [media object] / [digital
`
`content].”
`
`b.
`
`Where does pre-processing occur?
`
`Plaintiff’s proposed construction is silent as to where pre-processing occurs. By contrast, the
`
`Web Defendants argue that pre-processing occurs “at the browser,” while the Mobile Phone
`
`Defendants suggest that pre-processing occurs “at the client device.”
`
`The Web Defendants argue that pre-processing must occur “at the browser” and not on a
`
`server. See Web Defs.’ Opening Br. 11-13, ECF No. 108. In support of this contention, the Web
`
`Defendants first argue that the claims of the ‘557 and ‘482 Patents require pre-processing to occur
`
`at a browser. See id. (quoting ‘557 Patent claims 1, 45 and ‘482 Patent claim 1). Next, the Web
`
`Defendants argue that the specification disavows non-browser based pre-processing by identifying
`
`the “browser, or client side intelligence” of the Prepare and Post tools as a “key differentiator” from
`
`the prior art. See id. (quoting ‘557 Patent col.4, ll.58-60). Furthermore, the Web Defendants state
`
`that the written description demonstrates the scope of the claimed invention by repeatedly and
`
`uniformly referring to pre-processing as being web-based and occurring at a browser. See id.
`
`(quoting ‘557 Patent col. 2, ll.40-44, 48-51). Moving to the prosecution history, the Web Defendants
`
`8
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 9 of 67 PageID 2827
`
`argue that the applicants distinguished the Fredlund prior art and their own invention by noting that
`
`the former involved server-side processing while the latter required browser-side processing. See
`
`id. (quoting App. Supp. Web Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009),
`
`at App. 127-29, ECF No. 114). Based on the foregoing, the Web Defendants claim that pre-
`
`processing is properly located “at the browser.” See id.
`
`In response to the Web Defendants, Plaintiff first argues that locating all pre-processing “at
`
`the browser” would nullify important differences between the claims of the ‘557 Patent and would
`
`make the broader claims of the ‘482 Patent superfluous. See Pl.’s Resp. to Web Defs. 4-9, ECF No.
`
`120. Accordingly, Plaintiff states that the applicants knew how and when to inform the reader of a
`
`“browser” requirement by using that term in certain claims, including Claims 56 and 71 of the ‘557
`
`Patent, but not using the term elsewhere in the ‘557 Patent or in any claim of the ‘482 Patent. See
`
`Pl.’s Opening Br. 10-11, ECF No. 106. Next, Plaintiff argues that the Web Defendants’ “at the
`
`browser” limitation is improper because it takes a description from the preferred web browser
`
`embodiment and reads it into the claims of the ‘557 and ‘482 Patents. See Pl.’s Opening Br. 10-11,
`
`ECF No. 106. Here, Plaintiff notes that each of the Web Defendants’ citations to the written
`
`description is to a discussion of the preferred embodiment, not the invention as a whole. See Pl.’s
`
`Resp. to Web Defs. 4-9, ECF No. 120. Finally, Plaintiff argues that the prosecution history cited by
`
`the Web Defendants nowhere mentions the narrow concept of “browser”-side processing but
`
`distinguishes Fredlund on the more general basis of “device”-side processing. See id.
`
`For their part, the Mobile Phone Defendants argue that pre-processing occurs “at the client
`
`device.” See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115. In support of this proposal, the
`
`Mobile Phone Defendants quote the same prosecution history as the Web Defendants, including the
`
`9
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 10 of 67 PageID 2828
`
`applicants’ statement that “pre-processing occurs prior to upload at the local device.” See id.
`
`(quoting App. Supp. Mobile Phone Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4,
`
`2009), at App. 59-60, ECF No. 116-4). Other than offering a proposed construction that is silent as
`
`to the location of pre-processing, Plaintiff offers no response to the Mobile Phone Defendants’
`
`suggestion that pre-processing occurs “at the client device.” See Pl.’s Resp. to Mobile Phone Defs.
`
`8-11, ECF No. 122. As such, the Web Defendants in their responsive briefing state that Plaintiff has
`
`not disputed that pre-processing requires processing on the user’s device. See Web Defs.’
`
`Responsive Br. 4, ECF No. 117.
`
`In determining where pre-processing occurs, the Court has started with the language of the
`
`claims. As Plaintiff concedes, the majority of the claims appearing in the ‘557 Patent–which discuss
`
`pre-processing by a “media object identifier . . . embedded within a third party web site”–may fairly
`
`be read to require pre-processing in a browser. See, e.g., ‘557 Patent claim 1. Importantly, however,
`
`the “browser” limitation is not supported by every claim of the ‘557 Patent, such as claims which
`
`recite pre-processing “at the local computer.” See id. claim 45. Furthermore, the language of the
`
`‘482 Patent nowhere refers to a browser, but consistently describes pre-processing either “in a client
`
`device” or “in a local device.” See, e.g., ‘482 Patent claims 1, 11. Because the claim language is
`
`not limited to pre-processing “at the browser,” the Court may impose a browser limitation only if
`
`the specification defines pre-processing to occur at the browser, or if the intrinsic evidence contains
`
`a disavowal of claim scope so as to limit the broadly drafted pre-processing claims to include an “at
`
`the browser” limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365-68
`
`(Fed. Cir. 2012) (refusing to find “lexicography or disavowal” absent a clearly expressed intent to
`
`redefine a term or limit claim scope, noting that the court does not “read limitations from the
`
`10
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 11 of 67 PageID 2829
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`specification into claims” and “[i]t is not enough for a patentee to simply disclose a single
`
`embodiment or use a word in the same manner in all embodiments”). For the reasons argued by
`
`Plaintiff, the Court agrees that the intrinsic evidence relied upon by the Web Defendants in support
`
`of their “at the browser” limitation is insufficient to constitute a disavowal of claim scope.
`
`Specifically, the Court notes that: (1) the portions of the specification that discuss pre-processing
`
`within a browser relate to the preferred web site embodiment, and may not be grafted upon the
`
`claims as a whole; and (2) the applicants distinguished the Fredlund prior art on the basis of client-
`
`side processing, not processing within a browser. Furthermore, the Court finds that the applicants’
`
`description of the current invention as a “web-based media submission tool” is not a “clear and
`
`unmistakable disclaimer” of pre-processing that occurs outside of a browser. See id.
`
`Though the Court finds imposing an “at the browser” limitation would be improper, the
`
`Court disagrees with Plaintiff that the definition of pre-processing may be silent as to the location
`
`of pre-processing. The claim language refers to pre-processing either: (1) by a “media object
`
`identifier”; or (2) at the “local computer,” “client device,” or “local device.” See ‘557 Patent claims
`
`1, 45; ‘482 Patent claims 1, 11. As to the “media object identifier” recited in certain claims of the
`
`‘557 Patent, the applicants made clear in the prosecution history that this claim feature enables
`
`“client-side pre-processing.” See App. Supp. Web Defs.’ Opening Br. (‘557 Patent, Interview
`
`Summ. Feb. 27, 2003), at App. 219, ECF No. 114-4. Elsewhere in the prosecution history, the
`
`applicants consistently characterized pre-processing as occurring either “at the client device” or “at
`
`the local device.” See, e.g., id. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App. 127, ECF
`
`No. 114-3 (“local device”); id. (‘482 Patent, Resp. Office Action Jan. 22, 2010), at App. 199, ECF
`
`No. 114-4 (“client device”).
`
`11
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 12 of 67 PageID 2830
`
`Based on the foregoing, the Court finds that locating pre-processing “at the client or local
`
`device” is supported by the claim language and prosecution history, and is sufficiently broad so as
`
`to be consistent with each claim of the ‘557 and ‘482 Patents. Accordingly, the Court finds that pre-
`
`processing must occur “at the client or local device.”
`
`c.
`
`Where is the pre-processed material transmitted?
`
`Plaintiff’s proposed construction is silent as to where pre-processed material is ultimately
`
`transmitted. For their part, the Web Defendants and the Mobile Phone Defendants both argue that
`
`pre-processed material is transmitted “to a server device.”
`
`As far as the Court can discern, the Web Defendants generally argue that, because the ‘557
`
`and ‘482 Patents claim a web-based invention, pre-processed material must be transmitted “to a
`
`server device.” See generally Web Defs.’ Opening Br., ECF No. 108; Web Defs.’ Responsive Br.,
`
`ECF No. 117. More specifically, the Web Defendants point to the preferred embodiment’s statement
`
`that pre-processing results in transportation “to a second location,” which the specification earlier
`
`defines as a “server.” See Web Defs.’ Responsive Br. 8, ECF No. 117 (citing ‘557 Patent col.4 l.67-
`
`col.5 l.2). The Web Defendants also direct the Court’s attention to the specification and their
`
`arguments regarding the meaning of “remote device,” which they suggest should be construed as a
`
`“web server.” See id. at 4 n.7, 29-30. The Mobile Phone Defendants do not specifically explain
`
`their use of the phrase “to a server device,” but quote the prosecution history in general support of
`
`their proposed construction. See Mobile Phone Defs.’ Opening Br. 13, ECF No. 115 (quoting App.
`
`Supp. Mobile Phone Defs.’ Opening Br. (‘482 Patent, Resp. Office Action of Feb. 4, 2009), at App.
`
`59-60, ECF No. 116-4).
`
`Addressing the Defendants’ joint position, Plaintiff first argues that a construction requiring
`
`12
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 13 of 67 PageID 2831
`
`pre-processed material to be transmitted “to a server device” would conflict with the claim language,
`
`since certain claims recite transmission to a “remote device,” other claims use the narrower term
`
`“server device,” and Claim 1 uses both terms. See Pl.’s Opening Br. 9, ECF No. 106. The Mobile
`
`Phone Defendants suggest that this argument is irrelevant to their position because the claims in
`
`which the term “remote device” is used instead of “server device” are not asserted against the Mobile
`
`Phone Defendants. See Mobile Phone Defs.’ Responsive Br. 13, ECF No. 118. Plaintiff replies that
`
`such unasserted claims are relevant to claim construction because the term “pre-processing” should
`
`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,
`
`13
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
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`
`
`Case 3:11-cv-00367-O Document 168 Filed 05/21/12 Page 14 of 67 PageID 2832
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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
`
`14
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`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
`
`15
`
`Exhibit 2035
`Google Inc. v. Summit 6 LLC
`IPR2015-00806, Summit 6 LLC
`
`
`
`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 limita