Case 106-cv-00414-SLR
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ORACLE CORPORATION and
`ORACLE U.S.A INC
`
`Plaintiffs/Counterclaim Defendants
`
`EPICREALM LICENSING LP
`
`Defendant/Counterclaim Plaintiff.
`
`C.A No 06-414-SLR
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`DEFENDANTS CLAIM CONSTRUCTION BRIEF
`
`CORROON LLP
`
`Richard
`
`Horwitz 2246
`983
`Moore
`David
`POTTER ANDERSON
`Hercules Plaza 6th Floor
`1313
`Market Street
`Wilmington DE 19899
`Tel 302 984-6000
`rhorwitzWotteranderson.com
`dmoorepotteranderson com
`
`Attorneys for Defendant/Counterclaim
`PlaintffepicRealm Licensing LP
`
`OF COUNSEL
`
`Harry Roper
`George
`Bosy
`Aaron
`Barlow
`
`Patrick
`
`Patras
`
`David
`
`Paul
`
`Bennett
`
`Margolis
`
`Benjamin
`
`Bradford
`
`Johnson
`Emily
`BLOCK
`JENNER
`Wabash Avenue
`330
`Chicago IL 60611-7603
`Tel 312 923-8305
`
`Dated July 31 2008
`Public Version Dated August
`877618 /3 1393 Oracle
`
`2008
`
`Petitioner IBM – Ex. 1023, p. 1
`
`

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`Case 106-cv-00414-SLR
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`II SUMMARY OF THE ARGUMENT
`
`III STATEMENT OF FACTS
`
`Background of the Invention of the Patents in Suit
`
`The Invention
`
`The Claims
`
`The Prosecution History of the Patents in Suit
`
`IV ARGUMENT
`
`General Rules of Claim Construction
`
`The Texas Courts Construction of the Patents in Suit
`
`Construction of the Claim Terms in Issue Not Containing Means-PlusFunction
`Limitations
`
`Dispatching
`
`There is no dispute with respect
`
`to item
`
`With respect
`
`to item ii epicRealms construction should be adopted
`
`There is no dispute with respect
`
`to item iii
`
`HTTP-compliant device
`
`3/4
`
`Intercepting said request at said
`device/second
`
`computer system
`
`server/HTTP-compliant
`
`The term intercepting
`
`The term c4intercepting said request at said HTTP-eompliant device
`
`The term intercepting said request at said second computer system
`
`Page server
`
`Releasing
`
`iii
`
`10
`
`12
`
`12
`
`15
`
`16
`
`16
`
`17
`
`17
`
`20
`
`20
`
`21
`
`22
`
`24
`
`24
`
`25
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`27
`
`Petitioner IBM – Ex. 1023, p. 2
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`

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`Request.28
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`Webpage
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`Web server
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`Construction of Means-Plus-Function Limitations
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`10 Means for generating said request
`
`11 Means for receiving said request from said first computer
`
`12 Page server processing means
`
`Additional Claim Limitations That Oracle Asks for Construction
`
`data sources logging into machine readable medium and router
`
`dispatcher and interceptor
`
`intercepting said request at said second computer system
`
`connection cache
`
`CONCLUSION
`
`30
`
`31
`
`33
`
`34
`
`36
`
`37
`
`38
`
`38
`
`39
`
`40
`
`40
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`40
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`11
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`Petitioner IBM – Ex. 1023, p. 3
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`

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`TABLE OF AUTHORITIES
`
`Cases
`
`St Jude Med Inc
`Cardiac Pacemakers Inc
`296 F.3d 1106 Fed Cir 2002
`
`Chiuminatta Concrete Concepts Inc
`145 F.3d 1303 Fed Cir 1998
`
`Cardinal Indus Inc
`
`DirecTV Group Inc
`Finisar Corp
`523 F.3d 1323 Fed Cir 2008
`
`Cybex Intern Inc
`Free Motion Fitness Inc
`423 F.3d 1343 Fed Cir 2005
`
`Wa/-Mart Stores Inc
`Inc
`Golight
`355 F.3d 1327 Fed Cir 2004
`
`John Deere Co
`Graham
`383 U.S 11966
`
`BP Chems Ltd
`Hoechst Celanese Corp
`78 F.3d 1575 Fed Cir 1996
`cert denied 117 Ct 275 1996
`
`Safari Water Filtration Systems Inc
`Inc
`Innova/Pure Water
`381 F.3d 1111 Fed Cir 2004
`
`Lockheed Martin Corp
`Space Systems/Loral
`324 F.3d 1308 Fed Cir 2003
`
`Inc
`
`Wesiview Instruments inc
`Markman
`52 F.3d 967 Fed Cir 1995 en bane
`affd 517 U.S 370 1996
`
`United States intl Trade Comm
`Modine Mfg Co
`75 F.3d 1545 Fed Cir 1996
`
`Beyond Innovation Teck Co Ltd
`02 Micro intl Ltd
`521 F.3d 1351 Fed Cir 2008
`
`WH Corp
`Phillips
`415 F.3d 1303 Fed Cir 2005
`
`SanDisk Corp Memorex Products Inc
`415 F.3d 1278 Fed Cir 2005
`
`111
`
`33
`
`33 35 37 38
`
`15
`
`13
`
`34 35 37 38
`
`13
`
`14
`
`13
`
`34
`
`121315
`
`14
`
`39 40
`
`12 13 14 34
`
`13
`
`Petitioner IBM – Ex. 1023, p. 4
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`Ethicon Inc
`United States Surgical Corp
`103 F.3d 1554 Fed Cit 1997
`
`Vitronics Corp
`Conceptronic
`90 F.3d 1576 Fed Cit 1996
`
`Inc
`
`Wenger Mfg
`Coating Machinery Systems
`239 F.3d 1225 Fed Cir 2001
`
`Statutes
`
`35 U.S.C 102e
`
`35U.S.C.l03
`
`35 U.S.C
`
`112
`
`40
`
`14
`
`34
`
`11
`
`10
`
`33 35 37 38
`
`iv
`
`Petitioner IBM – Ex. 1023, p. 5
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`The patentee epicRealm Licensing LP epicRealm submits this opening claim
`
`construction brief pursuant to the Courts Scheduling Order There are two patents in suit U.S
`
`Patent Nos 5894554 the 554 patent and 6415335 the 335 patent Both patents relate
`
`to computer networks such as the internet and look to possible improved methods and systems
`
`for more rapidly responding to requests for what are called dynamic web pages EpicRealm has
`
`charged Oracle Corporation and Oracle U.S.A Inc collectively Oracle with infringing
`
`claims 1-5 and 7-11 of the 554 patent and claims
`
`and 16 of the 335 EpicRealm submits
`
`with this brief
`
`supporting appendix of exhibits and the Declaration of Dr David Finkel
`
`epicRealms expert
`
`in the technology pertaining to the patents in suit
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`This patent action was filed in 2006 and is now scheduled for
`
`two week jury trial
`
`commencing January 12 2009 EpicRealm is the named defendant and counterclaimant
`
`motion to substitute
`
`successor company Parallel Networks LLC is pending and fl.illy briefed
`
`D.I 60 Oracle is
`
`large provider of software for third party use software that is useful for
`
`variety of applications In this action epicRealm accuses various Oracle products including the
`
`Oracle Web Cache Oracle Application Server and Oracle Database Products which use RAC
`
`Real Application Clusters with infringement
`
`Pursuant to this Courts Scheduling Order the parties originally exchanged their
`
`proposed claim constructions in December 2007 Exh
`
`epicRealms December 2007
`
`Proposed Claim Construction Chart Exh
`
`Oracles December 2007 Proposed Claim
`
`Construction Chart Again pursuant
`
`to the Courts Scheduling Order the parties filed with the
`
`Court the Parties Proposed Element-by-Element Claim Construction Chart on June 30 2008
`
`The specifications of the 554 and 335 patents are identical Therefore when citing to the
`patent specification in this brief only cites to the 554 patent are provided
`
`Petitioner IBM – Ex. 1023, p. 6
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`Exh
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`In that June submission Oracle submitted claim constructions for three terms page
`
`server releasing and Web server that are different from Oracles proposed constructions
`
`that Oracle previously submitted in December For the purposes of this claim construction brief
`
`epicRealm assumes Oracles position is the one it submitted in June 2008
`
`Both parties have asked the Court to construe twelve claim terms Oracle disputes
`
`epicRealms proposed construction of all
`
`twelve terms In addition Oracle has requested
`
`construction of an additional eight terms terms that epicRealm believes need no construction
`
`EpieRealm will show in this opening brief why its proposed claim constructions are correct
`
`II
`
`SUMMARY OF THE ARGUMENT
`
`EpicRealm shows herein that the twelve disputed claim terms have an ordinary meaning
`
`taken with the intrinsic evidence
`
`In this case the specification of the patents in suit is
`
`particularly helpful
`
`to the Court on the disputed claim construction issues As discussed below
`
`for each of twelve disputed terms the claim constructions proposed by epicRealm are dictated by
`
`the intrinsic evidence in light of the meaning of those terms to one of skill
`
`in the art
`
`III
`
`STATEMENT OF FACTS
`
`Background of the Invention of the Patents in Suit
`
`The patents in suit disclose and claim improved methods and systems for managing the
`
`generation of dynamic Web pages Both patents share
`
`common specification and
`
`priority
`
`filing date of April 23 1996 Exh
`
`554 patent Exh
`
`335 patent The named inventors
`
`are Messrs Keith Lowery Andrew
`
`Levine and Ronald
`
`Howell Id The work that led to
`
`the filing of the April 23 1996 patent application was conducted by the inventors beginning
`
`about mid-1995 This research was performed on behalf of the original owner of the patents
`
`InfoSpinner Inc of Richardson Texas The patents were later acquired by epicRealm
`
`Petitioner IBM – Ex. 1023, p. 7
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`Licensing LP the named defendant and now Parallel Networks LLC.2 For convenience these
`
`companies will be referred to collectively as epicRealm
`
`The Invention
`
`The patented invention can best be understood in the context of the prior art and the prior
`
`person would use Web client
`
`art problems that the patents solved This prior art included the then existing World Wide Web
`the Web In order to access information over the Web
`running Web browser e.g Microsoft Internet ExplorerTM or other
`
`typically
`
`computer
`
`software capable of requesting and displaying Web content See Exh
`
`554 patent at col
`
`11 14-37 The Web client would then send that request over the Web to the appropriate Web
`
`server that had the information requested The Web server upon receipt of the request
`
`processed the request and returned the requested information back to the Web browser See Id
`
`at col
`
`11 31-37 The prior art used
`
`publicly available software language to facilitate this
`
`process the language was and is called HTML HyperText Markup Language Id at col
`
`11 19-21 The prior art also used
`
`protocol
`
`for certain Web communications called HTTP
`
`Hypertext Transport Protocol Jet at col
`
`11 24-26
`
`Initially most Web sites provided only static Web pages Typically
`
`static Web page
`
`might include some text and some graphics much like
`
`page in book It was static in the
`
`sense that
`
`like
`
`page in
`
`book the information is set at the time of authorship Static Web
`
`pages were files stored on the Web server that remain the same until they are manually modified
`
`Declaration of Dr David Finkel Finkel Decl at
`
`When
`
`static Web page is requested
`
`the Web server retrieves the specific file requested by the Web client and returns that file to the
`
`Web client without modifying the file Id
`
`related corporate entities are epicRealm Inc epicRealm Operating Inc and epicRealm
`Licensing LLC
`
`Petitioner IBM – Ex. 1023, p. 8
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`As the Web developed Web sites began to provide dynamic Web pages i.e Web pages
`
`that are generated only after they are requested in response to specific request of the Web client
`
`In other words they were not static they could contain information that could change like the
`
`time of day weather information or
`
`stock quote Id at
`
`To this end the prior art
`
`Common Gateway Interface UI was developed to facilitate the generation of dynamic Web
`
`pages by Web server as were various tools that facilitated the use of the CGI See Exh
`
`554 patent at col
`
`47-62 The processing of dynamic Web pages is more resource-intensive
`
`than is the case with static Web pages e.g requiring more processor time memory and/or other
`
`resources Finkel Decl at
`
`see also Exh
`
`554 patent at col
`
`11 1-12 As the number of
`
`dynamic Web page requests increased many issues arose based on this increased demand for
`
`Web server resources including slower response time the failure to provide the requested Web
`
`content or even the complete failure crashing of the Web server Id
`
`The patents in suit summarize some of the problems with the management of dynamic
`
`Web page requests by the prior art including CUT
`
`Tools that generate CUT applications do not however
`resolve the
`problem of managing numerous Web pages and requests at Web
`single company may maintain hundreds of
`site For example
`Web pages at their Web site Current Web server architecture also
`does not allow the Web server to efficiently manage the Web page
`and process Web client requests Managing these hundreds of
`Web pages in
`coherent maimer and processing all requests for
`access to the Web pages is thus
`task Existing
`difficult
`tools are limited in their capabilities to facilitate
`development
`dynamic Web page generation and do not address the issue of
`managing Web requests or Web sites
`
`Exh
`
`554 patent at col
`
`11 1-12 The prior art attempted to solve these problems by
`
`adding hardware i.e more computers or routers to Web site to handle the increase in requests
`
`for dynamic Web pages Finkel Decl at
`
`This approach adding computer hardware was
`
`costly and cumbersome Id
`
`Petitioner IBM – Ex. 1023, p. 9
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`The patents in suit solve the aforementioned problems associated with the management of
`
`dynamic Web pages in way very different from the prior art attempts to solve those problems
`
`e.g CGI and related development
`
`tools An example of the architecture of an embodiment of
`
`the patented invention is shown in Figure
`
`of the patents in suit
`
`FIGURE
`
`Exh
`
`554 patent at Fig
`
`cover page In the above architecture
`
`starting from the left of the
`
`diagram the Web client 200 which again may simply be
`
`computer running Microsoft
`
`Internet Explorer initiates the request for
`
`static or dynamic Web page and the request is sent
`
`over the Web to the Web server 201 for processing
`
`Id at col
`
`11 55-57 The Web server
`
`may itself process some of the requests and send Web pages back to the Web client Some
`
`requests are not handled by the Web server according to the patent For those requests that will
`
`not be processed at the Web server Interceptor 400 intercepts the request and routes it
`
`to the
`
`Dispatcher 402 Id at col
`
`58-60 see also col
`
`11 37-39 This interceptor performs the
`
`intercepting functionality
`
`term that both parties ask the Court to construe
`
`In the above illustration three page servers are shown Id at Figure
`
`However there
`
`could be fewer than three or more than three page servers depending on the configuration of the
`
`Petitioner IBM – Ex. 1023, p. 10
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`Web site See Id at col
`
`II 37-39 When the request is received at the Web server the Web
`
`server initially has the duty to process the request However when
`
`request is intercepted and
`
`routed from the Web server to
`
`page server that page serverassumes the processing duties for
`
`that request
`
`In this way the Web server is released to perform other tasks See id at col
`
`11 8-19 at col
`
`II 20-24
`
`Coming back to Figure above once
`
`request is intercepted in the patented invention it
`
`is sent to the dispatcher 402 The function of the dispatcher is to select
`
`page server that can
`
`more efficiently process the request First the dispatcher examines the request to determine the
`
`subset of page servers that are capable of processing the request See e.g Id at col
`
`11 12-
`
`13 Second the dispatcher makes an informed selection as to which page server in the subset
`
`can more efficiently process the request based on dynamic information maintained about
`
`the
`
`page servers This dynamic information is not to be confused with the dynamic content of
`
`Web page See e.g id at col
`
`11 14-19 In that way the dispatcher can take advantage of
`
`the fact that one page server in the subset of capable page servers can more efficiently process
`
`the request than the other page servers can process it
`
`Id at col
`
`50-col
`
`19 In this
`
`example the dispatcher greatly increases the efficiency of processing Web page requests As
`
`disclosed in the patents in suit this type of load balancing of dynamic Web page requests can
`
`significantly increase the performance at
`
`busy Web site Exh
`
`554 patent at col
`
`11 16-
`
`19
`
`As just noted the selection made by the dispatcher as to which page server can more
`
`efficiently process the request is based on dynamic information maintained about page servers by
`
`the dispatcher
`
`Id at col
`
`11 50-55 In the context of the patented invention dynamic
`
`information about the page servers has several qualities First it
`
`is important to recognize that
`
`Petitioner IBM – Ex. 1023, p. 11
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`dynamic information is information that can only be established during the execution of
`
`program Finkel Dccl at
`
`In other words dynamic information is not information that can
`
`be established prior to the execution of the program Id In addition dynamic information in
`
`the context of the patent must be information maintained about page servers Exh
`
`554
`
`patent at col
`
`11 50-55 This dynamic information maintained about page servers must
`
`indicate which page server can more efficiently process the request
`
`Id at col
`
`50-col
`
`19
`
`Three examples given in the patents in suit illustrate the type of dynamic information that
`
`allows the dispatcher to determine which page server can more efficiently process the request
`
`As
`
`first example the dynamic information may identify
`
`page server that has the least
`
`processing load e.g the number of requests that the page server is servicing as compared to
`
`other page servers
`
`page server that can process the request more quickly than the other page
`
`servers can process it
`
`Id atcol
`
`Il 14-19 As the patent discloses
`
`load balancing
`
`capability can significantly increase performance at
`
`busy Web site...
`
`Id at col
`
`11 16-18
`
`This is
`
`type of information that cannot be known until the program is executing because the
`
`number of requests being serviced cannot be determined until the page server software is
`
`running In
`
`second example in the patent
`
`the dynamic information may identify
`
`particular
`
`page server that is already logged into
`
`data source
`
`page server that can access the requested
`
`data more quickly than
`
`page server that would need to log into the data source Id at col
`
`11
`
`5-13 Again this is the type of information that cannot be known until the software is running
`
`because the page server cannot
`
`log into
`
`data source until
`
`the page server software is running
`
`As
`
`final example the dynamic information may identify
`
`page server that has already
`
`retrieved the requested content in
`
`previous request
`
`page server that therefore does not need
`
`Petitioner IBM – Ex. 1023, p. 12
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`to spend time to obtain the requested content
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`from the data source Id at col
`
`11 1-3 Yet
`
`again this is the type of information that that cannot be known until the page server software is
`
`running
`
`The summary of the invention set forth in the patents in suit explains how the patented
`
`invention functions
`
`In one embodiment the present invention claims
`computer-
`dynamic Web page
`implemented method for managing
`generation request to Web server the computer-implemented
`method comprising the steps of routing the request from the Web
`page server the page server receiving the request and
`server to
`releasing the Web server to process other requests prodessing the
`the processing being performed by the page server
`request
`concurrently with the Web server as the Web server processes the
`other requests and dynamically generating Web page in response
`the Web page including data dynamically retrieved
`to the request
`from one or more data sources
`
`Exh
`
`554 patent at col
`
`11 20-3
`
`The patented invention provides many advantages
`
`for Web site host The patented
`
`invention improves the performance of web site to process
`
`request by allowing for
`
`dispatching and the subsequent
`
`routing to
`
`page server as discussed above Exh
`
`554 patent
`
`at col
`
`11 14-19 In addition the patented invention improves performance because it
`
`facilitates the scaling up of the Web site to handle more requests as the Web traffic grows Id
`
`at col
`
`11 11-24 Scalability refers to the ability to increase the processing capability of
`
`Web site e.g the ability to add page servers as needed Id Finkel Decl at
`
`The Claims
`
`The patents in suit claim computer
`
`implemented method for managing
`
`dynamic Web
`
`page generation request Exh.1 554 patent claims 1-8 Exh
`
`335 patent claims
`
`16
`
`networked system for managing
`
`dynamic Web page generation request Exh
`
`554 patent
`
`Petitioner IBM – Ex. 1023, p. 13
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`claims 9-10 and machine readable medium that can be used by
`
`computer to manage
`
`dynamic Web page requests Exh
`
`554 patent claim 11
`
`Independent claims
`
`and 11 of the 554 patent are representative of the claims at issue
`
`in the litigation Claim reads
`
`dynamic Web
`computer-implemented method for managing
`page generation request to Web server said computer-
`implemented method comprising the steps of
`
`routing said request from said Web server to
`page server said
`page server receiving said request and releasing said Web server to
`process other requests wherein said routing step further includes
`the steps of intercepting said request at said Web server routing
`said request from said Web server to
`dispatcher and dispatching
`said request to said page server
`
`processing said request said processing being performed by said
`page server while said Web server concurrently processes said
`other requests and
`
`dynamically generating Web page in response to said request
`said Web page including data dynamically retrieved from one or
`more data sources
`
`Exh
`
`554 patent at col
`
`63-col
`
`11
`
`Claim reads
`
`dynamic Web page
`networked system for managing
`generation request said system comprising
`
`one or more data sources
`
`page server having
`
`processing means
`
`first computer system including means for generating said
`request and
`
`second computer system including means for receiving said
`request from said first computer said second computer system also
`router said router routing said request from said
`including
`second computer system to said page server wherein said routing
`further includes intercepting said request at said second computer
`routing said request from said second computer to
`dispatcher
`
`Petitioner IBM – Ex. 1023, p. 14
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`and dispatching said request to said page server said page server
`receiving said request and releasing said second computer system
`to process other requests said page server processing means
`processing said request and dynamically generating Web page in
`response to said request said Web page including data
`dynamically retrieved from said one or more data sources
`
`Id at col
`
`39-col 10
`
`17
`
`Claim 11 reads
`
`machine readable medium having stored thereon data
`11
`representing sequences of instructions which when executed by
`computer system cause said computer system to perform the steps
`of
`
`dynamic Web page generation request from Web server
`routing
`page server said page server receiving said request and
`to
`releasing said Web server to process other requests wherein said
`routing step further includes the steps of intercepting said request
`at said Web server routing said request from said Web server to
`dispatcher and dispatching said request to said page server
`
`processing said request said processing being performed by said
`page server while said Web server concurrently processes said
`other requests and
`
`dynamically generating Web page said Web page including data
`retrieved from one or more data sources
`
`Id at col 10 11 25-41
`
`The Prosecution History of the Patents in Suit
`
`The prosecution history for the 554 patent appears in the appendix at Exhibit
`
`EPIC000J74-324
`
`and the prosecution history for the 335 patent appears in the appendix at
`
`Exhibit
`
`EP1C000325-565 Here the prosecution histories have little bearing on the issue of
`
`claim construction and may be briefly summarized as follows The single application that led to
`
`the issuance of the 554 patent S.N 08/636477 was filed on April 23 1996 and originally
`
`contained sixteen claims Exh at EPIC000 191 EPIC0002 11-215 All sixteen originally
`
`presented claims were rejected under 35 U.S.C 103 as obvious over Barbari patent no
`
`In
`
`Petitioner IBM – Ex. 1023, p. 15
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`5532838 in view of Goldberg et al Beyond the Web Excavating the Real World via Mosaic
`
`Id at EPIC00024I EpicRealm disagreed with the rejection Id at EP1C000264-267 In
`
`response the examiner withdrew the rejection over the Barbari and Goldberg references and
`
`issued
`
`new obviousness rejection over
`
`single reference Irwin et al patent no 5404527
`
`Id at EPIC00028O Epickealm again disagreed with the examiners rejection Id at
`
`EP1C000294-297 The examiner then allowed the claims as amended Id at EPIC0003O7-
`
`308 The amended claims issued as U.S Patent No 5894554 on April 13 1999 Id at
`
`EPIC000 179 EPIC000 1884 89
`
`The single patent application that led to the issuance of the 335 patent 09/234048 was
`
`filed on January 19 1999 as
`
`divisional of the aforementioned patent application that led to the
`
`issuance of the 554 patent Exh at EP1C000425 The application as originally filed
`
`included 29 claims claims 17-45 which were rejected under the judicially created doctrine of
`
`obviousness-type double patenting as being unpatentable over claims 1-li of U.S Patent No
`
`5894554 Id at EPIC00048
`
`The claims were also rejected under 35 U.S.C
`
`102e as
`
`being anticipated by Leaf patent no 5754772 Id The double patenting rejection was
`
`overcome by the filing of
`
`terminal disclaimer Id at EP1C000497 EpicRealm disagreed
`
`with the examiners anticipation rejection Id at EP1C000497-499 The examiner then
`
`withdrew the double patenting and anticipation rejections and entered an obviousness rejection
`
`over Rogers et al patent no 5752246 in view of Malcolm patent no 5701463 Id at
`
`EP1C000536 Again epicRealm disagreed with the examiners rejection Id at EPIC00055O-
`
`552 The examiner allowed all 29 originally presented claims without amendment as U.S
`
`Patent No 6415335 on July
`
`2002 Id at EP1C000329 EP1C000338-339 EP1C000554
`
`11
`
`Petitioner IBM – Ex. 1023, p. 16
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`IV
`
`ARGUMENT
`
`General Rules of Claim Construction
`
`The law on claim construction is well settled and can be divided into general rules of
`
`claim construction that apply to all claims and special rules that apply to means-pIus-function
`
`limitations The law related to the construction of means-plus-function
`
`limitations appears
`
`below at Section IV.D
`
`Claim construction is
`
`question of law See Markman
`
`Westview Instruments Inc 52
`
`F.3d 967 970-71 Fed Cir 1995 en bane affd 517 U.S 370 1996 The Federal Circuit
`
`more recently clarified the general rules of claim construction in its en bane decision in Phillips
`
`WET Corp 415 F.3d 1303 1312 Fed Cir 2005 citation omitted The Phillips court
`
`confirmed that disputed claim terms are generally given their ordinary and customary
`
`meaning which is the meaning that the term would have to
`
`person of ordinary skill
`
`in the
`
`art. .at the time of the invention Id at 1312-13
`
`The Phillips court further emphasized that
`
`the person of ordinary skill
`
`in the art is deemed to read the claim term ..
`
`in the
`
`context of the entire patent
`
`including the specification Id at 1313 Thus claims are to be
`
`construed in light of the context
`
`in which the terms appear in the claims and the specification
`
`Id Importantly when using the specification to discern the meaning of disputed term court
`
`must take care not to import limitations from the specification into the claim Id at 1323 To do
`
`so is
`
`clear error of law
`
`When the ordinary meaning of
`
`claim term is readily apparent claim construction
`
`involves little more than the application of the widely accepted meaning of commonly
`
`understood words Phillips 415 F.3d at 1314 For terms having
`
`particular meaning in
`
`field
`
`of art the court
`
`looks to the words of the claims themselves the remainder of the specification
`
`the prosecution history and extrinsic evidence concerning relevant scientific principles the
`
`17
`
`Petitioner IBM – Ex. 1023, p. 17
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`meaning of technical
`
`terms and the state of the art Id The claims are read in view of the
`
`specification which is always highly relevant to the claim construction analysis Usually it
`
`is
`
`dispositive it
`
`is the single best guide to the meaning of disputed term Id at 1315 citations
`
`omitted Further it
`
`is not permissible to focus on only portion of the specification and ignore
`
`other parts rather
`
`court must always read the claims in view of the full specification
`
`SanDisk Corp Memorex Products Inc 415 F.3d 1278 1285 Fed Cir 2005
`
`Because of its availability to the public intrinsic evidencethe claims the specification
`
`and the prosecution historyare important in construing disputed claim language Innova/Pure
`
`Water Inc
`
`Safari Water Filtration Systems Inc 381 F.3d 1111 1116 Fed Cir 2004
`
`While the claims and specification are the best indicators of claim scope
`
`court should also
`
`consider the patents prosecution history if
`
`it
`
`is in evidence Markman 52 F.3d at 980 see also
`
`Graham
`
`John Deere Co 383 U.S
`
`33 1966 However because the prosecution history
`
`represents an ongoing negotiation between the USPTO and the patent applicant rather than the
`
`final product of that negotiation it often lacks the clarity of the specification and thus is less
`
`useful
`
`for claim construction purposes Phillips 415 F.3d at 1317
`
`court may consider extrinsic evidence including expert testimony dictionaries and
`
`learned treatises in order to assist it
`
`in construing the true meaning of the language used in the
`
`patent Markman 52 F.3d at 979-80 citations omitted
`
`are free to consult
`
`dictionaries and technical
`
`treatises at any time in order to better understand the underlying
`
`technology and may also rely on dictionary definitions when construing claim tenns so long as
`
`the dictionary definition does not contradict any definition found in or ascertained by
`
`reading
`
`of the patent documents
`
`Id at 1322-23 Though extrinsic evidence can shed useful light on
`
`the relevant art it
`
`is less significant than the intrinsic record in determining the legally operative
`
`Ii
`
`Petitioner IBM – Ex. 1023, p. 18
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`meaning of claim language Phillips 415 F.3d at 13 17-18 internal citations and quotation
`
`marks omitted The Court should always consult the specification in deciding what ordinary
`
`meaning is most consistent with the patented invention Free Motion Fitness Inc
`
`Cybex
`
`Intern Inc 423 F.3d 1343 1348 Fed Cir 2005
`
`An important rule of claim construction is that it would be highly unusual
`
`to construe
`
`claim to exclude the preferred embodiment disclosed in the specification As the court held in
`
`Vitronics Corp
`
`Conceptronic
`
`Inc 90 F.3d 1576 1583-84 Fed Cir 1996
`
`Such an interpretation is rarely if ever correct and would require
`highly persuasive evidentiary support which is wholly absent
`in
`this case See Modine Mfg Co
`United States Intl Trade
`Comm
`75 F.3d 1545 1550 37 USPQ2d 1609 1612 Fed Cir
`1996 see also Hoechst 78 F.3d at 1581 38 USPQ2d at 1330
`We share the district courts view that it
`is unlikely that an
`inventor would define the invention in way that excluded the
`in this field would
`preferred embodiment or that persons of skill
`read the specification in such way.
`
`Thus in the absence of highly persuasive evidentiary support
`
`claim should be construed to
`
`cover the preferred embodiment as disclosed in the specification
`
`The courts have recognized that there is no magic formula or catechism for conducting
`
`claim construction Nor is the court barred from considering any particular sources or required
`
`to analyze sources in any specific sequence as long as those sources are not used to contradict
`
`claim meaning that is unambiguous in light of the intrinsic evidence Phillips 415 F.3d at 1324
`
`citing Vitronics 90 F.3d at 1583-84 The sequence of steps used by the judge in consulting
`
`various sources is not important what matters is for the court to attach the appropriate weight
`
`to
`
`be assigned to those sources in light of the statutes and policies that inform patent law Id
`
`citing Vitronics 90 F.3d at 1582
`
`14
`
`Petitioner IBM – Ex. 1023, p. 19
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`

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`Page 20 of 47 PagelD
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`13
`
`The Texas Courts Construction of the Patents in Suit
`
`Many of the claim terms presented for construction in this case have previously been
`
`construed by the United States District Court for the Eastern District of Texas the Texas
`
`Court These terms were first construed in Report and Recommendation Regarding Claim
`
`Construction issued by Magistrate Judge Caroline Craven on August 15 2006 This report and
`
`reco