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`NORTHERN DISTRICT OF CALIFORNIA
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`OPENTV, INC., et al.,
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`Plaintiffs,
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`v.
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`APPLE, INC.,
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`Defendant.
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`Case No. 14-cv-01622-HSG
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`CLAIM CONSTRUCTION ORDER
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`Re: Dkt. Nos. 95, 107, 111, 119
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`Plaintiffs OpenTV, Inc. and Nagravision, S.A. filed this patent infringement action against
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`Defendant Apple, Inc. The parties seek construction of eight claim terms found in three of the
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`asserted patents: Patent Nos. 5,884,033 (“the ’033 Patent”), 7,900,229 (“the ’229 Patent”), and
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`5,566,287 (“the ’287 Patent”). This order follows claim construction briefing, a technology
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`tutorial, and a claim construction hearing.
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`I. CLAIM CONSTRUCTION ANALYSIS
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`A. Legal Standard
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`Claim construction is a question of law to be determined by the Court. See Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 391 (1996). Generally, claim terms should be given
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`their ordinary and customary meaning—i.e., the meaning that the terms would have to a person of
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`ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–
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`13 (Fed. Cir. 2005) (en banc). There are only two circumstances where a claim is not entitled to
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`its plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
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`specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012).
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`When construing claim terms, the Federal Circuit emphasizes the importance of intrinsic
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`evidence such as the language of the claims themselves, the specification, and the prosecution
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`history. Phillips, 415 F.3d at 1312–17. The claim language can “provide substantial guidance as
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`to the meaning of particular claim terms,” both through the context in which the claim terms are
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`used and by considering other claims in the same patent. Id. at 1314. The specification is likewise
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`a crucial source of information. Although it is improper to read limitations from the specification
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`into the claims, the specification is “the single best guide to the meaning of a disputed term.” Id.
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`at 1315 (“[T]he specification is always highly relevant to the claim construction analysis. Usually,
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`it is dispositive.” (internal quotation marks omitted)); see also Merck & Co. v. Teva Pharms. USA,
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`Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (“[C]laims must be construed so as to be consistent
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`with the specification.”).
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`Despite the importance of intrinsic evidence, courts may also consider extrinsic evidence—
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`technical dictionaries, learned treatises, expert and inventor testimony, and the like—to help
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`construe the claims. Phillips, 415 F.3d at 1317–18. However, extrinsic evidence is “less
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`significant than the intrinsic record in determining the legally operative meaning of claim
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`language.” Id. at 1317 (internal quotation marks omitted).
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`B.
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`’033 Patent
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`The ’033 Patent, titled “Internet Filtering System for Filtering Data Transferred Over the
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`Internet Utilizing Immediate and Deferred Filtering Actions,” claims a system and method that
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`allows users to filter Internet transmissions containing objectionable material. The parties dispute
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`the scope of two claim terms related to the filtering mechanism of the invention.
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`1. “filters specifying immediate action” & “filters specifying deferred action”
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`Term
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`filters specifying
`immediate action
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`filters specifying
`deferred action
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`Plaintiffs’ Proposed
`Construction
`filters specifying whether to
`allow or block a transmission
`immediately and operate
`between the presentation and
`application levels of the
`seven-level ISO protocol
`model
`filters specifying whether to
`allow or block a transmission
`conditionally and operate
`between the presentation and
`application levels of the
`seven-level ISO protocol
`model
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`Defendant’s Proposed
`Construction
`filters specifying whether
`transmission of the message
`should be unconditionally
`allowed or blocked based on a
`port number or network
`address specified in the
`message
`filters specifying whether
`transmission of the message
`should be allowed or blocked
`based on information in the
`message other than a port
`number or network address
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`The ’033 Patent claims describe two types of filters that are used to determine whether a
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`transmission should be allowed or blocked: “filters specifying immediate action” and “filters
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`specifying deferred action.” For example, claim 1 describes:
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`1. A method for communicating with servers over the Internet to
`prevent or allow access to Internet sites, the method comprising
`computer-implemented steps of:
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`(a) opening a data stream to send a message through an interface
`to an Internet server;
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`(b) maintaining a database of filtering information comprising a
`table of filters, said table comprising
`(1) filters specifying immediate action, and
`(2) filters specifying deferred action;
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`(c) comparing
`filtering
`to
`the message
`in
`information
`information in at least one of said filters specifying
`immediate action and said filters specifying deferred
`action; and
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`(d) determining whether to prevent or allow the outgoing
`transmission of the message based on the comparison.
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`The parties dispute 1) on what basis the two types of filters are distinguishable and 2)
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`whether the filters operate only “between the presentation and application levels of the seven-level
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`ISO protocol model.”
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`i. Distinguishing “immediate action” filters from “deferred action” filters
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`The parties do not dispute that there must be some distinction between these two types of
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`filters. Based on the ordinary meaning of the claim language, the immediate action filters operate
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`immediately, while the deferred action filters operate on a deferred basis. The specification
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`elaborates upon this distinction and explains that immediate action filters, when triggered,
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`immediately and unconditionally indicate whether a transmission should be allowed or blocked,
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`whereas deferred action filters, when triggered, delay specifying whether to block or allow a
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`transmission until additional conditions are satisfied. The specification gives the following
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`example:
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`In a preferred embodiment, the system compares an interface port
`and an IP address to a stored list of ports and addresses. If a match
`is found, the system can allow the message to be transmitted or
`block the message prior to transmission [i.e., immediately and
`unconditionally indicate whether the transmission should be allowed
`or blocked]. The system can defer the decision whether to allow or
`block, and then monitor transmissions to search for a particular
`command and a particular filter pattern [i.e., defer the allow/block
`decision until additional conditions are satisfied].
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`’033 Patent 1:41-47. What distinguishes the filters is whether, once the filters are retrieved, the
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`decision to allow or block the transmission is made immediately and unconditionally or delayed
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`until additional conditions are satisfied.
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`The specification further describes the filters as follows:
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`Each filter entry in the filter database also has a field for specifying
`an action to be taken by the client if that filter were retrieved. These
`actions are essentially divided into two groups, direct action or
`deferred action. Direct actions indicate that the system should
`unconditionally allow or unconditionally block the transmission.
`When filter entries are retrieved, they are first scanned for entries
`that require direct action; if there are any, these actions are carried
`out immediately.
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`Id. at 4:12-20. Additionally, the patentee uses “i.e.” to define “immediate action” as
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`“unconditional allowing or blocking.” Id. at 4:49-50; see Edwards Lifesciences LLC v. Cook Inc.,
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`582 F.3d 1322, 1334 (Fed. Cir. 2009) (holding that a patentee’s use of “i.e.” “signals an intent to
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`define the word to which it refers”).
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`In the ’033 Patent prosecution history, the patentee distinguished the invention from prior
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`art partly on the basis of the ’033 Patent’s use of two types of filters. In contrast to the prior art,
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`“[t]he presence of [the deferred action filters that include conditional fields] together with the
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`direct action filters allows the type of highly selective filtering that is characteristic of Applicants’
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`invention.” Dkt. No. 107-13 at 8.
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`Defendant contends that the two filters must be distinguished on the basis of the
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`information used by the filters to make the allow/block decision. Defendant argues that
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`“[m]atching a port number or network address . . . is the only characteristic that differentiates
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`filters ‘specifying immediate action’ from those ‘specifying deferred action.’” Dkt. No. 111
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`(“Opp.”) at 9. But the specification does not expressly distinguish the filters based on the content
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`of the information used to indicate whether a transmission should be allowed or blocked. Rather,
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`as described above, the specification teaches that the filters differ as to whether they immediately
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`and unconditionally block a transmission once they are triggered, or whether they defer the
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`allow/block decision until additional conditions are satisfied.
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`Indeed, the very example cited in Defendant’s opposition brief suggests that Defendant’s
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`construction cannot be correct:
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`As an example of blocking an HTTP transmission, assume that the
`user requests “http://www.domain/test.html.” The client transmits
`the URL request and the domain name server returns an IP address,
`e.g. 1.2.3.4, corresponding to the domain name. The client tries to
`open a TCP/IP connection with that IP address and typically with
`port 80. If that IP address and port 80 . . . are together in a[n
`immediate action filter that specifies unconditional blocking], the
`system prevents the data stream from opening.
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`Rather than specifying blocking at this time, a filter can indicate a
`deferred action. In this example, the filter searches for a GET
`command as the keyword in an outgoing data stream, and for
`“test.html” as the filter pattern in the transmission. When the client
`sends a transmission with a GET command to get information under
`the directory test.html, the host server will respond with data for that
`directory. But if there is a blocking filter for test.html, the system
`can block the incoming data by discarding it or replacing it.
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`’033 Patent at 6:10-27. In this example, both types of filters are triggered by the user’s URL
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`request. The immediate action filter specifies whether to allow or block the transmission
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`immediately and unconditionally based solely on the port number and the IP address returned
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`from the domain name server in response to the URL request. The deferred action filter, also
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`activated by the user’s URL request, defers the allow/block decision until an additional condition
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`is satisfied—namely, the user’s attempt to retrieve information under the test.html directory. The
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`additional condition on which the deferred action filter bases its allow/block decision is whether a
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`given keyword—test.html—matches information contained in the URL address associated with
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`the user’s request. The Court finds that this example, in which a deferred action filter is triggered
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`by a user’s URL request and applied using information derived from the directory portion of a
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`URL address, is not consistent with Defendant’s construction of the deferred action filter as a
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`“filter specifying whether transmission of the message should be allowed or blocked based on
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`information in the message other than a port number or network address,” since a URL address is
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`a type of network address.1 See Opp. at 8 (noting that “URLs . . . , families of URLs, sites, or
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`domains” are types of network addresses). A claim construction that is inconsistent with a
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`preferred embodiment is “rarely, if ever, correct.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1583 (Fed. Cir. 1996).
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`Figure 3 is also instructive. In Box 102, the embodiment depicted by Figure 3 obtains a
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`list of the IP addresses associated with an opened port. “The system then checks for and retrieves
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`any filters that match the particular IP address.” ’033 Patent 4:46-48 (emphasis added). The
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`system then checks the “retrieved filters” and determines whether any immediate action filters are
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`triggered; if they are, the decision to allow or block the transmission is made immediately. See
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`’033 Patent 4:48-50; Fig. 3, Boxes 106, 108, & 110. If no immediate action must be taken at this
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`step, “it is determined whether a deferred action must be taken with respect to any of the retrieved
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`filter[s].” ’033 Patent at 4:65-67 (emphasis added). This written description of the illustration in
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`Figure 3 teaches that a deferred action filter may be “retrieved” based on the list of IP addresses
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`associated with an opened port, after which the system then delays the decision to allow or block
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`1 In fact, the specification expressly teaches that a URL may contain a directory, among other
`information. See ’033 Patent 2:67-3:10 (“To access a web site, the user enters a uniform resource
`locator (URL) request with the form “http://www.name.ext”, where “http://” indicates the
`protocol, and “www.name.ext” is a domain name . . . . The domain name can also be followed by
`other file names or directories, with the directories separated from the domain name and from
`other directories with slashes that serve as spacer characters. The directories sit below the home
`page, but are individually addressable and accessible.”).
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`the transmission until additional conditions are satisfied. See ’033 Patent Fig. 3, Box 116; id. Fig.
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`4. Thus, the specification does not distinguish the filters on the basis of the content used to make
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`the decision whether to allow or block a transmission, but rather on whether the decision is made
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`immediately and unconditionally, or delayed until additional conditions are satisfied.
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`Defendant’s construction is also not consistent with the other ’033 Patent claims.
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`Dependent claim six describes “[t]he method of claim 5, wherein the message includes a URL,
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`and step (c) includes comparing a domain name in the URL to filtering information in at least one
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`of said filters specifying immediate action and said filters specifying deferred action.” This claim
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`plainly contemplates the application of both types of filters based on the same content: domain
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`names and URLs, which are network addresses. See also ’033 Patent claim 13 (“The method of
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`claim 5, wherein the message includes a URL, wherein step (c) includes comparing a command in
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`the URL to at least one of said filters specifying immediate action and said filters specifying
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`deferred action.”); claim 14 (“The method of claim 6, wherein step (c) include[s] comparing
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`directory information in the URL to the filtering information.”).
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`The Court concludes that the specification does not expressly define or limit the two types
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`of filters on the basis of the content used by the filters to specify whether to allow or block a
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`transmission. Indeed, the specification and the claims themselves suggest that both types of filters
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`may base their allow/block decisions at least in part on “network addresses.” The Court therefore
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`rejects Defendant’s proposed construction.
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`Plaintiffs’ construction correctly reflects the distinguishing features of the two types of
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`filters at a high level by construing the immediate action filters as operating “immediately” and the
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`deferred action filters as operating “conditionally.” But the Court finds that a more precise
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`construction is both more accurate and more helpful to a jury. Accordingly, the Court finds that
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`“immediate action filters” are “filters that, once they are retrieved, specify whether to allow or
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`block a transmission immediately and unconditionally,” and that “deferred action filters” are
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`“filters that, once they are retrieved, defer the specification of whether to allow or block a
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`transmission until additional conditions are satisfied.”
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`ii. ISO protocol model layer limitation
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`It is important to consider the prosecution history of a patent when construing claim
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`language, as it often demonstrates “how the inventor understood the invention and whether the
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`inventor limited the invention in the course of prosecution, making the claim scope narrower than
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`it would otherwise be.” Phillips, 415 F.3d at 1317. “[W]hen the patentee unequivocally and
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`unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history
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`disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered.”
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`Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013).
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`In the ’033 Patent prosecution history, the applicant explicitly distinguished certain prior
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`art by stating that
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`[a]s discussed during the interview, the Schwed system and
`Applicants’ methods operate at different layers of the seven-level
`ISO communication protocol model . . . [T]he packet filters of
`Schwed operate between the network interface hardware (level 2)
`and the network software (level 3). Applicants’ filtering methods,
`by contrast, operate between the presentation and application levels
`(layers 6 and 7, respectively) of the seven-level ISO protocol model.
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`Dkt. No. 107-13 at 7.
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`Defendant seems to argue that this statement cannot constitute an unequivocal and
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`unambiguous disclaimer because the patentee also distinguished the Schwed prior art by amending
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`the ’033 Patent to require two types of filters instead of just one. However, the Court sees no
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`reason a patentee cannot distinguish prior art on two independent grounds, and Defendant does not
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`cite to any authority to the contrary. Similarly, Defendant also argues that there was no clear and
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`unmistakable disavowal during prosecution because the patentee did not amend the claims to
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`require that the filters operate at layers six and seven of the ISO protocol model. Of course, if a
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`patentee were required to amend his claims in order to limit their scope, there would be no need to
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`examine the prosecution history for clear and unmistakable disavowals in the first place. The
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`Court finds these arguments unpersuasive.
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`Finally, Defendant argues that Plaintiffs’ construction must be incorrect because it would
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`exclude preferred embodiments described in the specification. Defendant contends that it is
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`“nonsensical” to filter messages on the basis of an IP address, for example, at the application or
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`presentation layer, because such filter could only operate at layer 3 (network layer). Opp. at 10.
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`The parties’ experts disagree on this issue. See Dkt. Nos. 113, 119-2. The Court finds that
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`Plaintiffs’ construction does not render the claims nonsensical. Defendant admitted at the
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`technology tutorial that “[a]ll of the information . . . is available” at each layer of the model. Hr’g
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`Tr. at 53 (“It’s not like the information that is in the data is now not accessible at that layer. It is.
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`It’s just that the reason it’s considered a header or the reason we refer to information that’s added
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`at that layer as a header is because that’s information that that layer of the protocol has decided
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`I’m responsible—for example, at the IP layer, I’m responsible for making sure this message gets
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`to the intended destination.”).
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`The Court finds that the ’033 Patent prosecution history disclaimer that the filters operate
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`only between layers six and seven of the seven-level ISO protocol model is “clear and
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`unmistakable.” Biogen, 713 F.3d at 1096. Therefore, these terms must be construed in light of
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`that disclaimer.
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`*
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`*
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`*
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`The Court construes the “immediate action filter” claim phrase as “filters that, once they
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`are retrieved, specify whether to allow or block a transmission immediately and unconditionally
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`and operate between the presentation and application levels of the seven-level ISO protocol
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`model” and the “deferred action filter” claim phrase as “filters that, once they are retrieved, defer
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`the specification of whether to allow or block a transmission until additional conditions are
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`satisfied and operate between the presentation and application levels of the seven-level ISO
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`protocol model.”
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`C.
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`’229 Patent
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`The ’229 Patent, titled “Convergence of Interactive Television and Wireless
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`Technologies,” describes “a system and method for utilizing user profiles in an interactive
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`television system.” Essentially, the invention tracks user activity within the system and stores that
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`information in a user profile. The user profile is then used to customize data sent to or retrieved
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`by the user.
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`Defendant argues that the entire ’229 Patent is invalid because the terms “activity related to
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`television viewing” and “activity unrelated to television viewing,” on which all of the claims
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`depend, are indefinite. The parties further dispute the scope of two components of the system: the
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`“set-top box” and the “broadcast station.”
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`1. “activity [related / unrelated] to television viewing”
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`
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`Plaintiffs’ Proposed Construction Defendant’s Proposed Construction
`activity [related / unrelated] to
`indefinite
`watching television programming
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`The ’229 Patent uses this term in each of its independent claims to describe the types of
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`user activity information collected and assembled by the different components of the system. For
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`example, claim 1 describes:
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`1. A method for utilizing a user profile in an interactive television
`system, the method comprising:
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`updating a user profile responsive to a first user activity, the first
`user activity being initiated via a first device;
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`initiating a second user activity, the second user activity being
`initiated via a second device which is different from the first device,
`wherein either
`(i)
`the first user activity is related to television viewing
`and the second user activity is unrelated to television
`viewing, or
`(ii) the first user activity is unrelated to television viewing
`and the second user activity is related to television
`viewing;
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`accessing the user profile in response to the second user activity;
`and
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`transmitting data to a user responsive to the second user activity,
`wherein the transmitted data is based at least in part on the user
`profile, and wherein the first user activity affects a content of said
`data transmitted to the user responsive to the second user activity.
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`The Supreme Court recently clarified the standard courts must use to determine whether
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`patent claims are invalid for indefiniteness under § 112 of the Patent Act. In Nautilus, Inc. v.
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`Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court held “that a patent is invalid
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`for indefiniteness if its claims, read in light of the specification delineating the patent, and the
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`prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention.” 134 S. Ct. at 2124. That definiteness standard “mandates clarity, while
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`recognizing that absolute precision is unattainable.” Id. at 2129. The Federal Circuit has since
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`interpreted the Nautilus holding to require that the intrinsic evidence “provide objective
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`boundaries” on the scope of the claim meaning. Interval Licensing LLC v. AOL, Inc., 766 F.3d
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`1364, 1371 (2014).
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`Defendant argues that “activity [unrelated / related] to television viewing” is indefinite
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`because the intrinsic evidence does not provide objective distinctions between the two types of
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`activities, and therefore the infringement determination is left to subjective opinion. But the cases
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`cited by Defendant dealt with “purely subjective” claim phrases. Datamize, LLC v. Plumtree
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`Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005) (holding that the phrase “aesthetically
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`pleasing” was indefinite because the scope of that phrase’s meaning “depend[s] solely on the
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`unrestrained, subjective opinion of a particular individual purportedly practicing the invention”);
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`see also Interval Licensing, 766 F.3d at 1374 (holding that the term “in an unobtrusive manner”
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`did not satisfy the Nautilus standard because it “is highly subjective” and the intrinsic evidence did
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`not provide an “objective boundary” on its scope). Unlike the terms at issue in Datamize or
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`Interval Licensing, the “television viewing” terms contain an inherent objective distinction
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`between the two types of activities: whether or not a given activity is related to television viewing
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`is a determination that can be made without resort to subjective opinion.
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`Whatever ambiguity may be introduced by the language of the claims is clarified by the
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`prosecution history. These terms were added during prosecution to distinguish the invention
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`described by the ’229 Patent from prior art that did not teach or suggest “that a television program
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`guide and any number of non-program-guide applications may share a common user profile,
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`exchange data, or affect each other’s operation in any way.” Dkt. No. 107-21, at
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`OPENTV0002726. In other words, the ’229 Patent improved upon the prior art by allowing an
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`interactive television system to incorporate user activity information gleaned from activities not
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`related to the actual viewing of television into a user profile also populated with information
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`sourced from activities related to television viewing. The prosecution history contains several
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`examples of activities related to television viewing and disclosed by the prior art, such as remotely
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`accessing program listings, scheduling program reminders, adjusting parental control settings,
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`accessing interactive television program guide functionality related to preferences or “favorites”
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`settings, and scheduling recordings of television programs. Id. at OPENTV0002724-25. These
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`examples suffice to “inform, with reasonable certainty, those skilled in the art about the scope of
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`the invention.” Nautilus, 134 S. Ct. at 2124; see also Interval Licensing, 766 F.3d at 1373 (“[A]
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`patent which defines a claim phrase through examples may satisfy the definiteness requirement.”);
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`Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (finding that claim
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`phrase “not interfering substantially” was not indefinite because the prosecution history listed
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`eight specific examples of things that did not interfere substantially). That some gray area
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`regarding the scope of these terms may remain does not doom them as indefinite; as Nautilus
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`recognizes, “absolute precision is unattainable.” 134 S. Ct. at 2129. 2
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`Plaintiff argues that its construction reflects that the user activities contemplated by the
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`’229 Patent relate to watching television programming rather than generically viewing a physical
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`television—theoretically, a television could be used to engage in activities unrelated to watching
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`television programming, such as browsing the internet. The Court agrees that the intrinsic
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`evidence supports Plaintiff’s construction and accordingly adopts it.
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`2. “set-top box”
`
`
`
`OpenTV Proposed Construction
`a device that receives a
`programming signal and outputs
`audio and video signals for
`presentation on display
`
`Apple Proposed Construction
`device that decodes and tunes
`television signals
`
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`2 Plaintiff also asserts that Defendant waived its indefiniteness argument by failing to allege that
`the ’229 Patent is invalid as indefinite in its invalidity contentions. The Court finds this argument
`meritless. In its invalidity contentions, Defendant identified “grounds of invalidity [of the ’229
`Patent] based on (1) lack of written description . . . (2) lack of enablement . . . and (3)
`indefiniteness under 35 U.S.C. § 112, second paragraph.” Dkt. No. 107-24 at 55. Defendant then
`stated that “[t]o the extent the following limitations are even definite (under 35 U.S.C. § 112,
`second paragraph), the ’229 Patent fails to sufficiently describe them,” and listed the “activity
`[unrelated / related] to television viewing” term. Id. In all of its subsequent representations to
`Plaintiff, Defendant asserted its indefiniteness argument regarding this term. The Court finds that
`Defendant provided more than adequate notice to Plaintiff of its contention that this term is invalid
`as indefinite, and therefore did not waive this argument.
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`This term describes a component of the claimed invention that may be used to conduct and
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`transmit user activity, and store a user profile based on that activity. See ’229 Patent claims 6, 11,
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`14.
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`Defendant limits the term “set-top box” to a device that is capable of “decod[ing] and
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`tun[ing] television signals” based on the specification’s disclosure that the set-top box may receive
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`“television programming” signals. See ’229 Patent at 6:44-45. But the words “decode” and
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`“tune” do not appear anywhere in the specification. Furthermore, the specification also discloses
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`that signals sent and received by the set-top box “may encompass a wide variety of data
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`exchanges,” including “analog or digital signals,” “signals for high-definition television,” and
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`“internet communications.” Id. at 6:42-52. Defendant’s construction suggests that the set-top box
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`must be capable of decoding and tuning television signals. There is no indication in the
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`specification that the invention excludes set-top boxes that are not capable of processing such
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`signals, and the Court declines to read such a limitation into the patent. Plaintiffs’ construction, on
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`the other hand, properly encompasses all of the data exchanges disclosed by the specificat
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