Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
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`II THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`EPICREALM LICENSTh1G LP
`
`Plaintiff
`
`AUTOFLEX LEASING INC et al
`
`Defendants
`
`EPICREALM LICENSTh1G LP
`
`Plaintiff
`
`FRANKLIN COVEY CO et al
`
`Defendants
`
`205-CV-163
`
`205-CV-356
`
`PLAINTIFF EPICREALM LICENSING LPS REPLY TO
`DEFENDANTS RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`Petitioner IBM – Ex. 1034, p. 1
`
`

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`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
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`TABLE OF CONTENTS
`
`INTRODUCTION
`
`LEGAL PRINCIPLES
`
`THIS COURT SHOULD ADOPT EPICREALMS PROPOSED CLAIM CONSTRUCTIONS
`
`II
`
`III
`
`dispatching
`
`page server
`
`request
`
`releasing
`
`transferring
`
`web page
`Web server
`
`HTTP-compliant device
`
`said processing being performed by said page server while said Web
`server concurrently processes said other requests
`
`intercepting
`
`Means-plus-function claims
`
`Defendants
`Standard
`
`Formulate
`
`an
`
`Incorrect
`
`Mean-Plus-Function
`
`The Structure Corresponding
`to
`Means-Plus-Function is the Algorithm
`
`Computer-Implemented
`
`the Claim Terms in Question are
`Both Parties Recognize that
`Means-Plus-Function Terms that are Computer-Implemented
`
`Parties Identification of the Algorithm Structure
`
`The Algorithms Corresponding
`Known
`
`to the Functions
`
`are Well
`
`Additional Deficiencies
`
`in Defendants Proposed Structures
`
`This Court Should Adopt epicRealms Constructions as the Only
`Constructions that Satisfies
`112
`
`IV
`
`CONCLUSION
`
`10
`
`18
`
`23
`
`26
`
`28
`
`32
`
`38
`
`42
`
`45
`
`54
`
`56
`
`57
`
`58
`
`59
`
`61
`
`62
`
`65
`
`66
`
`Petitioner IBM – Ex. 1034, p. 2
`
`

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`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Atmel Corp
`Information Storage Devices
`198 F.3d 1374 1380 Fed Cir 1999
`
`Braun Med Inc
`Abbot Labs
`124 F.3d 1419 1424 Fed Cir 1997
`
`Brookhill- Wi/k
`Intuitive Surgical
`334F.3d 1294 1301 Fed Cir 2003
`
`St Jude Med Inc
`Cardiac Pacemakers Inc
`296 F.3d 1106 1113 Fed Cir 2002
`
`ApplyYourselj Inc
`Inc
`CollegeNet
`418 F.3d 1225 1231 Fed Cir 2005
`
`Service Eng Corp
`Embrex Inc
`216 F.3d 1343 1347 Fed Cir 2000
`
`Ericsson Inc
`Harris Corp
`417 F.3d 1241 Fed Cir 2005
`
`Avia Group mt
`Inc
`Hockerson-Halberstadt
`222 F.3d 951 Fed Cir 2000
`
`In re Dossel
`115 F.3d 942 Fed Cir 1997
`36 43 49 52
`
`Safari Water Filtration Systems Inc
`Innova/Pure Water Inc
`381 F.3d 1111 Fed Cir 2004
`
`Via Technologies Inc
`Intel Corp
`319 F.3d 1357 Fed Cir 2003
`43 49 52
`Zebco Corp
`Johnson Worldwide Assocs Inc
`175 F.3d 985 989 Fed Cir 1999
`
`Impala Linear Corp
`Linear Technology Corp
`379 F.3d 1311 Fed Cir 2004
`
`11
`
`55
`
`55 56
`
`11 12 15
`
`55
`
`41
`
`54 57 58 59
`
`35 36
`
`54 55 56
`
`38
`
`56 60
`
`43
`
`Petitioner IBM – Ex. 1034, p. 3
`
`

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`Medical Instrumentation
`Diagnostics Corp
`344 F.3d 1205 1212 Fed Cir 2003
`
`Elekta AB
`
`Formosa Electronics Industries Inc
`Mobility Electronics Inc
`No 504-cv-00103-DF E.D Tex
`February 24 2006
`
`Node
`
`Lederman
`3d 1343 Fed Cir 2004
`335
`
`WH Corp
`Phillips
`415 F.3d 1303 Fed Cir 2005
`
`57 59
`
`40
`
`1-4 17 19 24 26 29-30 32 35-37 39 41 43 49 55
`
`Renishaw PLC Marposs Societa Per Azioni
`158 F.3d 1243 Fed Cir 1998
`
`SanDisk Corp Memorex Products Inc
`415 F.3d 1278 1285 Fed Cir 2005
`
`Tivo
`
`Echostar Communications Corp
`No 204-CV-1-DF E.D Tex _________
`
`Inc
`Vitronics Corp
`Conceptronic
`90 F.3d 1576 Fed Cir 1996
`
`Intl Game Technology
`WIVIS Gaming Inc
`184 F.3d 1339 Fed Cir 1999
`
`35 36
`
`32 43
`
`43
`
`19
`
`57 58
`
`111
`
`Petitioner IBM – Ex. 1034, p. 4
`
`

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`FEDERAL STATUTES
`
`35 U.S.C 112
`35 U.S.C 282
`
`39 40 54 55 596064
`17 39 50
`
`iv
`
`Petitioner IBM – Ex. 1034, p. 5
`
`

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`INTRODUCTION
`
`Pursuant
`
`to the Agreed Docket Control Order signed on January 13 2006 plaintiff
`
`epicRealm Licensing LP epicRealm submits this reply to Defendants Responsive Claim
`
`Construction Brief Defendants Brief for disputed terms or phrases in United States Patent
`
`Nos 5894554 and 6415335 collectively
`
`the epicRealm Patents and singularly the 554
`
`patent and the 335 Patent
`
`II
`
`LEGAL PRINCIPLES
`
`In epicRealms Opening Claim Construction Brief Opening Brief numerous claim
`
`construction principles were provided The principles discussed below supplement and reinforce
`
`those principles
`
`In looking at
`
`the specification for guidance in claim construction
`
`specific danger
`
`recognized by
`
`the Federal Circuit
`
`is
`
`an
`
`impermissible reading of
`
`limitations from the
`
`specification into the claims See Phillips
`
`AWH Corp 415 F.3d 1303 1323 Fed Cir 2005
`
`In this regard the Federal Circuit recognizes that although the specification often describes very
`
`specific embodiments of the invention we have repeatedly warned against confining the claims
`
`to those embodiments
`
`Id at 1323 Emphasis added
`
`This even holds true if only one
`
`embodiment
`
`is disclosed Id at 1323 As an additional
`
`instruction in this regard the Federal
`
`Circuit has indicated that
`
`clear disclaimer of particular subject matter the fact that the
`
`inventor anticipated that
`
`the invention may be used in
`
`particular manner does not
`
`limit
`
`the
`
`scope to that narrow context Brookhill-Wilk
`
`Intuitive Surgical 334 F.3d 1294 1301 Fed
`
`Cir 2003
`
`With regards to the prosecution history of
`
`patent
`
`the Federal Circuit has recognized
`
`that because the prosecution history represents an ongoing negotiation between the Patent
`
`Petitioner IBM – Ex. 1034, p. 6
`
`

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`Office and the 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 at 1317
`
`With regards to extrinsic evidence the Federal Circuit has indicated that
`
`have
`
`viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in
`
`determining how to read claim terms for several
`
`reasons Phillips
`
`AWH Corp 415 F.3d
`
`1303 1318 Fed Cir 2005
`
`Ultimately
`
`construction that stays true to the claim language and most naturally
`
`aligns with the patents description of the invention will be in the end the correct construction
`
`Phillips
`
`AWH Corp 415 F.3d 1303 1316 Fed Cir 2005 Thus 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 Additionally
`
`claim construction that excludes
`
`preferred
`
`embodiment
`
`is rarely if ever correct citations omitted SanDisk Corp 415 F.3d at 1285
`
`With regards to an interplay between claim construction and
`
`validity analysis the
`
`Federal Circuit has indicated that
`
`we have acknowledged the maxim that claims should
`
`be construed to preserve their validity we have not applied that principle broadly and we have
`
`certainly not endorsed
`
`regime in which validity analysis is
`
`regular component of claim
`
`construction
`
`citations omitted Instead we have limited the maxim to cases in which the court
`
`concludes
`
`after applying all
`
`the available tools of claim construction
`
`that
`
`the claim is still
`
`ambiguous citations omitted Phillips
`
`AWH Corp 415 F.3d 1303 1327 Fed Cir 2005
`
`III
`
`THIS COURT SHOULD ADOPT EPICREALMS PROPOSED CLAIM CONSTRUCTIONS
`
`This Court should adopt epicRealms proposed constructions
`
`because epicRealms
`
`constructions are consistent with principles stated in Phillips The construction that stays true to
`
`Petitioner IBM – Ex. 1034, p. 7
`
`

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`the claim language and most naturally aligns with the patents description of the invention will
`
`be in the end the correct construction Phillips
`
`AWH Corp 415 F.3d 1303 1316 Fed Cir
`
`2005 en banc
`
`As outlined below this can be contrasted with Defendants
`
`proposed constructions
`
`which are not only in conflict with the intrinsic evidence but also clearly violate established
`
`claim construction
`
`tenets To this end the Federal Circuit has made it clear
`
`that claim
`
`construction is not meant
`
`to change the scope of the claims but only to clarify their meaning
`
`Embrex Inc
`
`Service Engg Corp 216 F.3d 1343 1347 Fed Cir 2000 The construction of
`
`claims is simply way of elaborating the normally terse claim language in order to understand
`
`and explain but not to change the scope of the claims Further there is
`
`heavy presumption
`
`in favor of construing claim language as it would be plainly understood by one of ordinary skill
`
`in the art Johnson Worldwide Assocs Inc
`
`Zebco Corp 175 F.3d 985 989 Fed Cir 1999
`
`Rather than complying with these principles Defendants have chosen to veil arguments in their
`
`proposed constructions in hopes that one of these will pass through unnoticed allowing them to
`
`support
`
`future non-infringement position
`
`Notably taking
`
`stance that at best
`
`can be deemed ironic Defendants suggest
`
`that
`
`epicRealm violates claim construction principles See Defendants Brief Page
`
`However upon
`
`close review of Defendants Brief this Court will
`
`find that the Defendants
`
`not epicRealm
`
`repeatedly violate claim construction principles Examples of Defendants
`
`repeated violations of
`
`claim construction principles include but are not limited to
`
`to contradict
`
`the
`
`and
`
`then
`
`attempting
`
`to
`
`use
`
`that
`
`into the claims not only from the
`Reading unnecessary
`extra limitations
`specification but also from other non-intrinsic evidence
`Looking at
`litigation-inspired extrinsic evidence
`in an attempt
`plain and ordinary meaning of terms
`evidence
`
`Mischaracterizing
`mischaracterization to support their construction
`
`intrinsic
`
`Petitioner IBM – Ex. 1034, p. 8
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`Citing and using an erroneous purpose of the invention principle as
`violate fundamental claim construction principles
`Suggesting extra verbiage in claim language to achieve specific advantages or
`objects of the invention
`Surgically focusing on only selected portions of the specification as opposed to
`viewing the specification as whole
`Suggesting constructions that read out preferred embodiments of the invention
`Using alleged prosecution disclaimers where none exist and
`Attempting to limit the claims to particular embodiments
`
`license to
`
`Additionally Defendants do not heed statements provided by this Court in summarizing
`
`principles from Phillips about extrinsic evidence
`
`In pointing out the less reliable nature of extrinsic evidence the court reasoned
`that such evidence
`does not
`the patent
`is by definition not part of
`the views or understanding of
`person of ordinary skill
`necessarily reflect
`relevant art
`is often produced specifically for litigation
`is far reaching to
`several views and
`it may encompass
`may distort the true
`the extent
`that
`meaning intended by the inventor
`
`in the
`
`Claim Construction Order Mobility Electronics Inc
`
`Formosa Electronics
`
`Industries Inc
`
`No 504-cv-00103-DF E.D Tex
`
`February 24 2006 attached as Appendix
`
`Notably
`
`for almost every term Defendants choose to look to extrinsic evidence
`
`convenient
`
`to their
`
`purpose In doing so they put blinders on and look only at the portion of the extrinsic evidence
`
`that supports their purpose For example where there are multiple discussions of
`
`term in
`
`particular reference they choose to ignore the discussion which would counter their definition
`
`Also where there are multiple definitions by the same reference they choose to ignore the other
`
`definitions In citing extrinsic evidence in this brief epicRealm only looks to extrinsic evidence
`
`cited by Defendants
`
`Furthermore in the Technology Background
`
`section of Defendants Brief Defendants
`
`mischaracterize the epicRealm Patents Specifically Defendants submit arguments concerning
`
`what
`
`they allege is
`
`taught by
`
`the
`
`epicRealm patents
`
`Because
`
`the majority of
`
`these
`
`Petitioner IBM – Ex. 1034, p. 9
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`mischaracterizations
`
`are also discussed in Defendants Brief with respect
`
`to
`
`particular term or
`
`phrase epicRealm will address such mischaracterizations
`
`in the below briefing where they are
`
`used as an alleged support for Defendants position
`
`As indicated in Defendants Brief new constructions were presented by Defendants for
`
`four of the contested terms or phrases Defendants Brief Page
`
`As all of these modifications
`
`were not clearly identified in Defendants Brief to assist this Court during review of the parties
`
`briefs epicRealm has provided the old and new definitions for the terms or phrase modified by
`
`Defendants
`
`dispatching
`
`epicReahns Proposed Construction
`page server for processing
`selecting
`request
`based on cifiTent state information maintained about
`page servers and sending the request to the selected
`nage server
`
`Defendants Proposed Construction
`request to make an informed selection based
`analyzing
`on dynamic information about page servers of which
`page server should process the request and sending the
`reciuest to the selected nage server
`
`This Court should construe dispatching as selecting
`
`page server for processing
`
`request based on current state information maintained about page servers and sending the
`
`request to the selected page server As outlined in epicRealm Opening Brief this construction
`
`is entirely consistent with the specification as
`
`whole Specifically in epicRealms Opening
`
`Brief epicRealm provided examples of how
`
`dispatcher selects
`
`page server based on the state
`
`of such page servers
`
`In contrast Defendants
`
`propose
`
`construction
`
`that
`
`is not only inconsistent with
`
`specification but is also ambiguous on its face Indeed this Court can quickly reject Defendants
`
`construction because of such ambiguity If
`
`the Defendants
`
`proposed construction is adopted
`
`there will be an unfortunate future need to ascertain the meaning of their construction
`
`Petitioner IBM – Ex. 1034, p. 10
`
`

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`Defendants proposed construction is ambiguous because of their use of the prepositional
`
`phrase of which pager server should process the request What does this prepositional phrase
`
`modify Under one interpretation the prepositional phrase modifies informed selection Under
`
`another
`
`interpretation the prepositional
`
`phrase modifies dynamic information about
`
`page
`
`servers The meaning of Defendants
`
`construction changes dramatically depending on which
`
`term the prepositional phrase modifies
`
`To ascertain meaning of Defendants
`
`construction
`
`one could look to basic grammar
`
`rules which indicate that the closest term to the modifier is the term being modified Under this
`
`principle the prepositional
`
`phrase would modify dynamic information about pagers servers
`
`With this construction
`
`an informed selection is thus based on dynamic information about
`
`pagers servers of which pager server should process the request The inquiry however does not
`
`stop here The meaning of dynamic information about pagers servers of which pager server
`
`should process
`
`the request
`
`is not apparent One reasonable interpretation
`
`of Defendants
`
`construction is that
`
`dispatcher does not actually make
`
`selection of
`
`page server Rather
`
`according to the reasonable interpretation
`
`of Defendants
`
`construction
`
`the page server that
`
`should process
`
`the request
`
`is provided to the dispatcher
`
`If
`
`this indeed is the meaning of
`
`Defendants phrase preferred embodiments in which the dispatcher selects
`
`page serer would
`
`be read out of the claims violating
`
`principle tenet of claim construction
`
`Vitronics Corp
`
`Conceptronics
`
`Inc 90 F.3d 1576 1583-84 Fed Cir 1996 Interpretations that
`
`read out
`
`preferred embodiments are rarely if ever correct
`
`Further
`
`in
`
`side-by-side comparison one can see how epicRealms construction is
`
`consistent with the specification whereas Defendants
`
`construction is not Specifically the
`
`Under
`
`third interpretation the prepositional phrase could modify page servers
`
`Petitioner IBM – Ex. 1034, p. 11
`
`

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`following table represents each parties proposed construction broken down into three rows of
`
`component parts
`
`epic Realms Proposed oiistructioii
`
`Defeiidaiit Proposed construction
`
`selecting
`
`page server for processing
`
`request
`based on current state information
`maintained about page servers
`
`and sending the request to the selected
`page server
`
`analyzing
`
`selection
`
`request to make an informed
`
`based on dynamic information about page
`servers of which page server should
`process the request
`and sending the request to the selected
`page server
`
`The parties are not in dispute as to the components in Row
`
`Accordingly this Court can focus
`
`on the components in Row
`
`and
`
`Row2
`
`To support constructions in Row
`
`both parties initially point
`
`to the following language
`
`in the specification epicRealms Opening Brief page
`
`Defendants Brief page 40
`
`Dispatcher 402 maintains
`variety of information regarding each Page server
`on the network and dispatches requests based on this information Col
`1-53
`
`11
`
`From the above passage one can see that information is maintained regarding each Page server
`
`epicRealms proposed construction includes language consistent with this in Row
`
`Defendants
`
`proposed language in Row
`
`does not as it does not specify the maintenance of such information
`
`Given the language about
`
`variety of information both parties next move to further
`
`language in the specification to determine the type of information The Defendants
`
`choose to
`
`look at only one small passage in the specification taken out of context Defendants Brief page
`
`40 whereas epicRealms looks
`
`at
`
`the multiple examples of dispatching
`
`given in the
`
`specification epicRealms Opening Brief pages
`
`and 10
`
`Petitioner IBM – Ex. 1034, p. 12
`
`

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`Specifically Defendants only look at
`
`the following language Dispatcher 402 retains
`
`dynamic information regarding the data sources that any given Page server can access Col
`
`11 54-56 Then Defendants excise the dynamic information portion of this language and tag on
`
`about page servers of which page server should process
`
`the request Although dynamic
`
`information about page servers of which page server should process the request
`
`is ambiguous
`
`one of ordinary skill
`
`in the art could interpret
`
`this as
`
`dispatcher being given instructions
`
`on
`
`where to send
`
`request
`
`In other words one could interpret Defendants
`
`construction as
`
`scenario in which the dispatcher does not select
`
`page server The specification makes clear that
`
`the appropriate page server is selected by the dispatcher See e.g Col
`
`11 51- Col
`
`11 19
`
`Accordingly if
`
`the Defendants
`
`construction is adopted preferred embodiments would be read
`
`out of
`
`the claims violating
`
`principle tenet of claim construction
`
`Vitronics Corp
`
`Conceptronics
`
`Inc 90 F.3d 1576 1583-84 Fed Cir 1996 Additionally in only looking at
`
`small portion of the specification Defendants impermissibly choose to not read the specification
`
`as whole violating another principle tenet of claim construction SanDisk Corp Memorex
`
`Products Inc 415 F.3d 1278 1285 Fed Cir 2005
`
`In comparison epicRealm looks at
`
`the entire specification including all examples of
`
`dispatching
`
`to determine types of information maintained to engage in dispatching From these
`
`examples it
`
`is clear that dispatching is based on current state information maintained about page
`
`servers
`
`that is in the cited examples
`
`whether the page servers have access to requisite data
`
`whether the page servers have
`
`page cache corresponding to
`
`request and/or
`
`the number
`
`or requests each page server is servicing
`
`Petitioner IBM – Ex. 1034, p. 13
`
`

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`
`Row
`
`Looking at
`
`the terms in Row
`
`epicRealm proposes an analog to Row
`
`that
`
`is
`
`selecting
`
`page server for processing
`
`request and sending the request to the selected page
`
`server Contrary to this Defendants propose analyzing
`
`request
`
`to make an
`
`informed
`
`selection The term analyzing is not contained in the specification Accordingly it
`
`is unclear
`
`whether selecting is separate from or
`
`part of analyzing Therefore Defendants introduce
`
`additional
`
`ambiguities with Defendants proposal for Row
`
`Additionally further ambiguity is raised by the fact
`
`that dynamic information about
`
`page servers of which page server should process the request suggests that the dispatcher does
`
`not engage in selection Accordingly it
`
`is unclear
`
`from Defendants
`
`proposed construction as to
`
`whether or not the dispatcher engages in selecting
`
`Therefore looking at side-by-side comparison it
`
`is clear that epicRealms construction is
`
`consistent with the specification whereas the Defendants
`
`construction is not
`
`This Court can and should adopt epicRealms construction and reject Defendants for any
`
`of the following reasons
`
`because Defendants
`
`construction has multiple ambiguities which
`
`would require further analysis to clarify the meaning of Defendants
`
`construction
`
`because
`
`reasonable interpretations
`
`of Defendants
`
`construction
`
`impermissibly read
`
`out preferred
`
`embodiments
`
`of
`
`the
`
`invention and
`
`because
`
`side-by-side
`
`comparison
`
`reveals how
`
`epicRealm construction is consistent with the specification and how Defendants
`
`construction
`
`is not consistent with the specification
`
`For all
`
`the
`
`above
`
`reasons
`
`this Court should adopt
`
`epicRealms construction
`
`of
`
`dispatching
`
`construction that is entirely consistent with the intrinsic evidence including the
`
`specification as whole
`
`Petitioner IBM – Ex. 1034, p. 14
`
`

`

`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
`
`Page 15 of 73 PagelD
`
`2345
`
`page server
`
`epicReahns Proposed Construction
`processing system operable to iceive
`request and
`
`dynamically generate content
`iquest
`
`in response to the
`
`Defendants Proposed Construction
`machine running page server softwai distinct
`from the Web server machine that generates
`dynamic
`Web page
`page-generating software that generates
`dynamic
`Web page on machine separate from the Web server
`machine
`
`This Court should construe page server as processing system operable to receive
`
`request and dynamically generate content
`
`in response to the request As outlined in epicRealm
`
`Opening Brief
`
`this construction
`
`is entirely consistent with the specification
`
`In contrast
`
`Defendants propose
`
`construction that
`
`is not only inconsistent with specification but
`
`is also
`
`based upon
`
`claim construction principle they conveniently create to support their position but
`
`which in fact directly contradicts established claim construction tenets
`
`In choosing to adopt epicRealms construction and reject Defendants
`
`construction
`
`this
`
`Court can look to epicRealms Opening Brief identifying how epicRealms construction is
`
`consistent with the intrinsic evidence and any of the following reasons
`
`Defendants
`
`propose importing into the
`
`claims extra limitations that
`
`are neither
`
`necessitated
`
`by the claims nor
`
`required
`
`by the
`
`specification
`
`In their new construction
`
`Defendants
`
`concede
`
`that
`
`page
`
`server
`
`can be software as opposed
`
`to their previous
`
`requirement
`
`that it must be machine However
`
`they still
`
`choose to add unnecessary extra
`
`verbiage in their construction
`
`namely by indicating that this software must be on machine
`
`separate from the Web server machine
`
`Because this extra verbiage is neither necessitated by the claims nor necessitated
`
`by the
`
`specification Defendants
`
`in violation of established claim construction tenets create
`
`claim
`
`construction
`
`principle premised on the
`
`idea that
`
`the extra verbiage
`
`is needed
`
`because
`
`Defendants
`
`allege the added limitations are essential
`
`to the claimed invention Defendants
`
`in
`
`Petitioner IBM – Ex. 1034, p. 15
`
`

`

`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
`
`Page 16 of 73 PagelD
`
`2346
`
`Brief Page 24 In fact
`
`these extra limitations regarding particular machinery are not required
`
`by the specification
`
`Thus by introducing this newly created claim construction principle the
`
`Defendants
`
`fully ignore other well-established
`
`claim construction principles The Federal
`
`Circuit has never accepted the so-called principle proposed by the Defendants Neither should
`
`this Court
`
`Rather the Federal Circuit has explicitly rejected
`
`similar proposal
`
`the idea that an
`
`advantage
`
`or object of the invention must be read into claims The case of Brookhill-Wilk
`
`Intuitive Surgical 334 F.3d 1294 Fed Cir 2003 is instructive in this regard In that case the
`
`Federal Circuit was faced with the construction of the term remote location in the context of
`
`surgeon operating with an instrument on
`
`patient The patentee argued that remote could
`
`mean in the same room as the patient and the alleged infringer argued that remote must mean
`
`in
`
`different room than the patient The court
`
`indicated that
`
`written description states the
`
`advantage of the invention in this context
`
`and the description of the preferred embodiment
`
`contemplates
`
`surgeon located outside of the operating room However despite this the court
`
`concluded remote location encompasses
`
`surgeon being in the same room as the patient
`
`indicating
`
`No statement
`in the written description however
`limitation on the
`invention The objective
`described is merely one of several
`the
`scope of
`objectives that can be achieved
`through the use of
`the invention the written
`that the invention must be used only in manner to
`description does not suggest
`attain that obj ective Advantages described in the body of the specification if not
`included in the claims are not per se limitations to the claimed invention
`Citations omitted
`
`constitutes
`
`The Background merely states the apparentthat
`traditional surgery is performed
`instruments on patients within the operating
`by direct manipulation of surgical
`the surgeon would always be in the operating room when
`room Stating that
`performing traditional surgery does not
`foreclose the presence of the surgeon
`within the operating room when performing remote surgery The statements from
`the description of the preferred embodiment are simply thatdescriptions of
`
`11
`
`Petitioner IBM – Ex. 1034, p. 16
`
`

`

`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
`
`Page 17 of 73 PagelD
`
`2347
`
`that permits surgeons to operate from across the world
`preferred embodiment
`Those statements do not indicate that
`the invention can only be used in such
`manner Absent
`the
`clear disclaimer of particular subject matter the fact
`that
`inventor anticipated that the invention may be used in
`particular manner does
`the scope to that narrow context
`not limit
`
`Id at 1301 Emphasis added From this instructive case
`
`it
`
`is clear
`
`that
`
`clear
`
`disclaimer of particular subject matter the fact
`
`that the inventor anticipated that the invention
`
`may be used in
`
`particular manner does not limit
`
`the scope to that narrow context Brook/i/il-
`
`Wi/k
`
`Intuitive Surgical 334 F.3d 1294 1301 Fed Cir 2003 There is no clear disclaimer
`
`present in the intrinsic evidence that supports the Defendants proposed construction
`
`In fact
`
`the
`
`opposite is true The specification of the epicRealm Patents clearly characterizes pages servers as
`
`software suggesting that the page servers can be resident wherever
`
`is convenient
`
`including on
`
`the same machine as the web server See e.g Col
`
`11 55-58 The preferred embodiment of
`
`the present
`
`invention is implemented
`
`as
`
`software module which may be executed
`
`on
`
`computer system such as computer system 100 in
`
`conventional manner and Col
`
`11 49-5
`
`In one embodiment each Page server 4041-n resides on
`
`separate machine on the network
`
`to distribute the processing of the request
`
`The Defendants mischaracterize statements in the specification in an attempt
`
`to advance
`
`this position In light of Defendants
`
`use of this mischaracterization with their invented principle
`
`it
`
`is instructive to look at Defendants
`
`specific argument
`
`the specification of the patents-in-suit makes clear the claimed invention
`addresses the need to avoid the highly inefficient processing of requests by
`single machine
`multiple threads on
`
`Defendants Brief page 23 Given this argument
`
`closer
`
`look at what
`
`the specification
`
`actually states is highly instructive In Col
`
`11 33-54 the specification states
`
`17
`
`Petitioner IBM – Ex. 1034, p. 17
`
`

`

`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
`
`Page 18 of 73 PagelD
`
`2348
`
`This prior art Web
`server environment
`however
`does not
`provide
`any
`mechanism for managing the Web requests or the Web sites As Web sites grow
`and as the number of Web clients and requests increase Web site management
`becomes
`crucial need
`
`large Web site may receive thousands of requests or hits in
`For example
`single day Current Web
`on
`each of
`these requests
`servers
`process
`single
`namely the Web
`server machine Although these machines may be
`machine
`running multi-threaded operating
`to be
`systems that allow transactions
`threads all
`the threads are nevertheless on
`processed by independent
`processor As such the Web executable thread may hand off
`machine sharing
`processing thread but both threads will still have to be handled by the
`request to
`processor on the Web
`server machine When numerous requests
`are being
`single machine the Web server
`simultaneously processed by multiple threads on
`can slow down significantly and become highly inefficient The claimed invention
`addresses this need by utilizing
`partitioned architecture to facilitate the creation
`and management of custom Web sites and servers Emphasis added
`
`single
`
`554 Patent Col
`
`11 33-54 emphasis added Looking at the text surrounding the underlined
`
`portions indicating
`
`crucial need and this need the above recitations clearly indicate that
`
`Web site management
`
`is the referenced need and that
`
`claimed invention addresses this
`
`by utilizing
`
`partitioned architecture to facilitate the creation and management of custom
`
`Web sites and servers Between the identification that Web site management becomes
`
`crucial
`
`need and the indication that
`
`partitioned architecture addresses this need
`
`specific web
`
`site management problem is provided Borrowing selectively
`
`from this specific example
`
`Defendants piece
`
`language together
`
`to mischaracterize
`
`the above
`
`text
`
`indicating
`
`that
`
`the
`
`claimed invention addresses the need to avoid the highly inefficient processing of requests
`
`by multiple threads on
`
`single machine Defendants Brief page 23 Defendants then use this
`
`mischaracterization throughout
`
`their argument
`
`in support of their construction
`
`essential to the claimed invention is the use of partitioned architecture
`in which the claimed Page server resides on machine separate from the Web
`server machine Defendants Brief Page 24
`
`Petitioner IBM – Ex. 1034, p. 18
`
`

`

`Case 507-cv-00125-DF-CMC Document 176 Filed 07/07/06
`
`Page 19 of 73 PagelD
`
`2349
`
`custom Web site management
`by characterizing their claimed invention as
`system that overcomes the inefficiency of such multi-threaded operating systems
`Lowery et al put multi-threaded operating systems outside the reach of the
`claims Defendants Brief Page 25
`
`Court should be guided by the patent draftsmans characterization of the
`claimed invention as utilizing
`partitioned architecture rather than
`highly
`single machine
`system that processes multiple threads on
`inefficient
`Defendants Brief Page 27
`
`Plaintiffs proposed construction for Page server would encompass
`told the world their claimed invention
`what Lowery et al
`did not
`Defendants Brief Page 27
`
`exactly
`include
`
`Such
`proposed construction flies in the face of the distinction that the Lowery
`et al made between their claimed invention and the prior art Web
`server
`environment Defendants Brief Page 27
`
`As discussed above when the language is viewed in its actual context as opposed to Defendants
`
`piecemeal-constructed context
`
`it becomes clear that each of these statements is clearly wrong
`
`correct and complete reading of the specification is Web site management becomes
`
`crucial
`
`and
`
`claimed invention addresses this need by utilizing
`
`partitioned architecture to
`
`facilitate the creation and management of custom Web sites and servers
`
`For further examples of inconsistency with Defendants piecemeal-constructed
`
`argument
`
`that the claimed invention addresses the need to avoid the highly inefficient processing of
`
`requests by multiple threads on
`
`single machine Defendants Brief page 23 this Court may
`
`look at
`
`the cited advantages
`
`and objects of epicRealms Patents which are described in the
`
`specification as follows
`
`Although this embodiment will no